Sittings · Document
REPORT (COM(2023)0232 – C90147/2023 – 2023/0133(COD)) 2024-01-30
On the proposal for a regulation of the European Parliament and of the Council on standard essential patents and amending Regulation (EU) 2017/1001
Committee on Legal Affairs · Rapporteur: Marion Walsmann Rapporteur for the opinion of the associated committee pursuant to Rule 57 of the Rules of Procedure: Danuta Maria Hübner, Committee on International Trade
DRAFT EUROPEAN PARLIAMENT LEGISLATIVE RESOLUTION
on the proposal for a regulation of the European Parliament and of the Council on standard essential patents and amending Regulation (EU) 2017/1001
(COM(2023)0232 – C90147/2023 – 2023/0133(COD))
(Ordinary legislative procedure: first reading)
The European Parliament,
– having regard to the Commission proposal to Parliament and the Council (COM(2023)0232),
– having regard to Article 294(2) and Article 114 of the Treaty on the Functioning of the European Union, pursuant to which the Commission submitted the proposal to Parliament (C90147/2023),
– having regard to Article 294(3) of the Treaty on the Functioning of the European Union,
– having regard to the opinion of the European Economic and Social Committee of 20 September 2023,
– having regard to Rule 59 of its Rules of Procedure,
– having regard to the opinions of the Committee on International Trade and the Committee on the Internal Market and Consumer Protection,– having regard to the report of the Committee on Legal Affairs (A9-0016/2024),
1. Adopts its position at first reading hereinafter set out;
2. Calls on the Commission to refer the matter to Parliament again if it replaces, substantially amends or intends to substantially amend its proposal;
3. Instructs its President to forward its position to the Council, the Commission and the national parliaments.
Amendment 1
Proposal for a regulation
Recital 1
| Text proposed by the Commission | Amendment |
| (1) On 25 November 2020, the Commission published its intellectual property action plan31 , where it announced its goals of promoting transparency and predictability in licensing of standard essential patents (SEPs), including by improving the SEP licensing system, for the benefit of Union industry and consumers, and in particular small and medium-sized enterprises (SMEs)32 . The action plan was supported by Council Conclusions of 18 June 202133 and by the European Parliament in its Resolution34 | (1) On 25 November 2020, the Commission published its intellectual property action plan31, where it announced its goals of promoting transparency and predictability in licensing of standard essential patents (SEPs), including by improving the SEP licensing system, for the benefit of Union industry and consumers, and in particular micro, small and medium-sized enterprises (SMEs)32 . The action plan was supported by Council Conclusions of 18 June 202133 and by the European Parliament in its Resolution of 11 November 202134. |
| __________________ | __________________ |
| 31 Communication from the Commission to the European Parliament, the Council, the European Economic and Social Committee and the Committee of the Regions Making the most of the EU’s innovative potential An intellectual property action plan to support the EU’s recovery and resilience of 25 November 2020, COM(2020) 760 final. | 31 Communication from the Commission to the European Parliament, the Council, the European Economic and Social Committee and the Committee of the Regions Making the most of the EU’s innovative potential An intellectual property action plan to support the EU’s recovery and resilience of 25 November 2020, COM(2020) 760 final. |
| 32 OJ L 124 of 20.05.2003, p. 36. | 32 OJ L 124 of 20.05.2003, p. 36. |
| 33 Council conclusions on intellectual property policy, as approved by the Council (Economic and Financial Affairs) at its meeting on 18 June 2021. | 33 Council conclusions on intellectual property policy, as approved by the Council (Economic and Financial Affairs) at its meeting on 18 June 2021. |
| 34 European Parliament resolution of 11 November 2021 on an intellectual property action plan to support the EU’s recovery and resilience (2021/2007(INI)). | 34 European Parliament resolution of 11 November 2021 on an intellectual property action plan to support the EU’s recovery and resilience (2021/2007(INI)). |
Amendment 2
Proposal for a regulation
Recital 2
| Text proposed by the Commission | Amendment |
| (2) This Regulation aims at improving the licensing of SEPs, by addressing the causes of inefficient licensing such as insufficient transparency with regard to SEPs, fair, reasonable and non-discriminatory (FRAND) terms and conditions and licensing in the value chain, and limited use of dispute resolution procedures for resolving FRAND disputes. All these together reduce the overall fairness and efficiency of the system and result in excess administrative and transactional costs. By improving the licensing of SEPs, the Regulation aims to incentivise participation by European firms in the standard development process and the broad implementation of such standardised technologies, particularly in Internet of Things (IoT) industries. Therefore, this Regulation pursues objectives that are complementary to, but different from that of protecting undistorted competition, guaranteed by Articles 101 and 102 TFEU. This Regulation should also be without prejudice to national competition rules. | (2) This Regulation aims at improving the licensing of SEPs, by addressing the causes of inefficient licensing such as insufficient transparency with regard to SEPs, fair, reasonable and non-discriminatory (FRAND) terms and conditions and licensing in the value chain, and limited use of dispute resolution procedures for resolving FRAND disputes. All these together reduce the overall fairness and efficiency of the system and result in excess administrative and transactional costs, which reduce resources available for investment in innovation. By improving the licensing of SEPs, the Regulation aims to incentivise participation by European firms in the standard development process and the broad implementation of such standardised technologies, particularly in Internet of Things (IoT) industries. Therefore, this Regulation pursues objectives that are complementary to, but different from that of protecting undistorted competition, guaranteed by Articles 101 and 102 TFEU. This Regulation should also be without prejudice to national competition rules. |
Amendment 3
Proposal for a regulation
Recital 2 a (new)
| Text proposed by the Commission | Amendment |
| (2a) Good faith SEP licensing negotiations between parties occur in many cases, yet in some, SEPs become the subject of legal proceedings. This Regulation aims to provide advantages to both Union SEP holders and SEP implementers by introducing mechanisms designed to address two key issues. First, situations where SEP implementers unreasonably delay or decline FRAND licenses. Second, scenarios where SEP holders impose non-FRAND royalties due to the risk of injunction and a lack of transparency. It is essential to ensure that SEP holders and implementers act in good faith before, during and after licensing negotiations. SEP implementers using standardised technology should proactively seek to take a license from the SEP holder who owns the technology they use and SEP holders should grant a license under FRAND terms and conditions to any party seeking one, irrespective of the position of the potential licensee in the respective value chain. |
Amendment 4
Proposal for a regulation
Recital 2 b (new)
| Text proposed by the Commission | Amendment |
| (2b) The measures introduced by this Regulation are consistent with the objectives of the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights (the ‘TRIPs Agreement’) to promote technological innovation and the dissemination of technology to the mutual advantage of the SEP holder and the user, as well as with the principles of preventing the abuse of intellectual property rights and adopting measures for public interest reasons. In particular, according to the TRIPs Agreement, an exception to the exclusive rights conferred by a patent is justified if it does not unreasonably conflict with a normal exploitation of the patent and it does not unreasonably prejudice the legitimate interests of the patent owner, taking account of the legitimate interests of third parties. |
Amendment 5
Proposal for a regulation
Recital 3
| Text proposed by the Commission | Amendment |
| (3) SEPs are patents that protect technology that is incorporated in a standard. SEPs are ‘essential’ in the sense that implementation of the standard requires use of the inventions covered by SEPs. The success of a standard depends on its wide implementation and as such every stakeholder should be allowed to use a standard. To ensure wide implementation and accessibility of standards, standard development organisations demand the SEP holders that participate in standard development to commit to license those patents on FRAND terms and conditions to implementers that chose to use the standard. The FRAND commitment is a voluntary contractual commitment given by the SEP holder for the benefit of third parties, and it should be respected as such also by subsequent SEP holders. This Regulation should apply to patents that are essential to a standard that has been published by a standard development organisation, to which the SEP holder has made a commitment to license its SEPs on fair, reasonable and non-discriminatory (FRAND) terms and conditions and that is not subject to a royalty-free intellectual property policy, after the entry into force of this Regulation. | (3) SEPs are patents that protect technology that is incorporated in a standard. SEPs are ‘essential’ in the sense that implementation of the standard requires use of the inventions covered by SEPs. The success of a standard depends on its wide implementation and as such every stakeholder should be allowed to use a standard. To ensure wide implementation and accessibility of standards, standard development organisations demand the SEP holders that participate in standard development to commit to license those patents on FRAND terms and conditions to implementers that chose to use the standard. The FRAND commitment is a voluntary contractual commitment given by the SEP holder for the benefit of third parties, and it should be respected as such also by subsequent SEP holders. This Regulation should apply to patents in force in one or more Member States that a SEP holder claims to be essential to a standard that has been published by a standard development organisation, to which the SEP holder or a previous holder of the SEPs in question has or has not made a commitment to license its SEPs on fair, reasonable and non-discriminatory (FRAND) terms and conditions and that is not subject to a royalty-free intellectual property policy, after the entry into force of this Regulation. |
Amendment 6
Proposal for a regulation
Recital 4
| Text proposed by the Commission | Amendment |
| (4) There are well established commercial relationships and licensing practices for certain use cases of standards, such as the standards for wireless communications, with iterations over multiple generations leading to considerable mutual dependency and significant value visibly accruing to both SEP holders and implementers. There are other, typically more novel use cases – sometimes of the same standards or subsets thereof - with less mature markets, more diffuse and less consolidated implementer communities, for which unpredictability of royalty and other licensing conditions and the prospect of complex patent assessments and valuations and related litigation weigh more heavily on the incentives to deploy standardised technologies in innovative products. Therefore, in order to ensure a proportionate and well targeted response, certain procedures under this Regulation, namely the aggregate royalty determination and the compulsory FRAND determination prior to litigation, should not be applied to identified use cases of certain standards or parts thereof for which there is sufficient evidence that SEP licensing negotiations on FRAND terms do not give rise to significant difficulties or inefficiencies. | (4) There are well established commercial relationships and licensing practices for certain implementations of standards, with iterations over multiple generations leading to considerable mutual dependency and significant value visibly accruing to both SEP holders and implementers. There are other, typically more novel implementations – sometimes of the same standards or subsets thereof – with less mature markets, more diffuse and less consolidated implementer communities, for which unpredictability of royalty and other licensing conditions and the prospect of complex patent assessments and valuations and related litigation weigh more heavily on the incentives to deploy standardised technologies in innovative products. Therefore, in order to ensure a proportionate and well targeted response, certain procedures under this Regulation, namely the aggregate royalty determination and the compulsory FRAND determination prior to litigation, should not be applied to identified implementations in which there is sufficient evidence that SEP licensing negotiations on FRAND terms and conditions do not give rise to significant difficulties or inefficiencies. |
Amendment 7
Proposal for a regulation
Recital 4 a (new)
| Text proposed by the Commission | Amendment |
| (4a) Significant difficulties or inefficiencies in the licensing of SEPs that affect the functioning of the internal market might result from, among other things, material impediments to the timely and effective deployment, development, distribution or commercialisation of a product, service, or technology, but also unreasonable delays, involving an undue postponement of the conclusion of a licence agreement. They may also result from excessive costs, multiple legal disputes, challenges or litigations involving more than one SEP holder or SEP implementer, as well as from barriers to innovation where the implementation of a standard, including any lack thereof, hinders, limits or curtails technological innovation or advancement, as compared to industry norms. |
Amendment 8
Proposal for a regulation
Recital 5
| Text proposed by the Commission | Amendment |
| (5) Whereas transparency in SEP licensing should stimulate a balanced investment environment, along entire Single Market value chains, in particular for emerging technology use cases underpinning Union objectives of green, digital and resilient growth, the Regulation should also apply to standards or parts thereof, published before its entry into force where inefficiencies in the licensing of the relevant SEPs severely distort the functioning of the internal market. This is particularly relevant for market failures hindering investment in the Single Market, the roll-out of innovative technologies or the development of nascent technologies and emerging use cases. Therefore, taking into account those criteria, the Commission should determine by a delegated act the standards or parts thereof that have been published before the entry into force of this Regulation and the relevant use cases, for which SEPs can be registered. | (5) Whereas transparency in SEP licensing should stimulate a balanced investment environment, along entire Single Market value chains, in particular for emerging technology implementations underpinning Union objectives of green, digital and resilient growth, the Regulation should also apply to standards or parts thereof, published before its entry into force where inefficiencies in the licensing of the relevant SEPs severely distort the functioning of the internal market. This is particularly relevant for market failures hindering investment in the Single Market, the roll-out or the development of innovative technologies and emerging implementations. Therefore, taking into account those criteria, the Commission should determine by a delegated act the standards or parts thereof that have been published before the entry into force of this Regulation and the relevant implementations, for which SEPs can be registered. |
Amendment 9
Proposal for a regulation
Recital 6
| Text proposed by the Commission | Amendment |
| (6) Because a FRAND commitment should be made for any SEP declared to any standard intended for repeated and continuous application, the meaning of standards should be broader than in Regulation (EU) No 1025/2012 of the European Parliament and of the Council35 . | (6) Because a FRAND commitment should be made for any SEP claimed to be essential to any standard intended for repeated and continuous application, the meaning of standards should be broader than in Regulation (EU) No 1025/2012 of the European Parliament and of the Council35. |
| __________________ | __________________ |
| 35 Regulation (EU) No 1025/2012 of the European Parliament and of the Council of 25 October 2012 on European standardisation, amending Council Directives 89/686/EEC and 93/15/EEC and Directives 94/9/EC, 94/25/EC, 95/16/EC, 97/23/EC, 98/34/EC, 2004/22/EC, 2007/23/EC, 2009/23/EC and 2009/105/EC of the European Parliament and of the Council and repealing Council Decision 87/95/EEC and Decision No 1673/2006/EC of the European Parliament and of the Council (OJ L 316, 14.11.2012, p. 12.) | 35 Regulation (EU) No 1025/2012 of the European Parliament and of the Council of 25 October 2012 on European standardisation, amending Council Directives 89/686/EEC and 93/15/EEC and Directives 94/9/EC, 94/25/EC, 95/16/EC, 97/23/EC, 98/34/EC, 2004/22/EC, 2007/23/EC, 2009/23/EC and 2009/105/EC of the European Parliament and of the Council and repealing Council Decision 87/95/EEC and Decision No 1673/2006/EC of the European Parliament and of the Council (OJ L 316, 14.11.2012, p. 12.) |
Amendment 10
Proposal for a regulation
Recital 7
| Text proposed by the Commission | Amendment |
| (7) Licensing on FRAND terms and conditions includes licensing royalty-free. Given that most issues arise with royalty-bearing licensing policies, this Regulation does not apply to royalty-free licensing. | (7) Licensing on FRAND terms and conditions, which are key in the development of the digital society, includes licensing royalty-free. Given that most issues arise with royalty-bearing licensing policies, this Regulation does not apply to royalty-free licensing of SEPs, except where such SEPs are part of a portfolio of patents licenses for royalties. |
Amendment 11
Proposal for a regulation
Recital 7 a (new)
| Text proposed by the Commission | Amendment |
| (7a) Open standards are key in the development of our digital society, including the development of open source software. Open standards remove barriers to interoperability, promote choice between vendors and technology solutions and ensure market competition and innovation. This Regulation applies to open standards, whilst not discouraging SEP holders to innovate and participate in the open collaborative standards development. |
Amendment 12
Proposal for a regulation
Recital 10 a (new)
| Text proposed by the Commission | Amendment |
| (10a) Patent pools, as industry-led joint patent licensing solutions, are beneficial to the market and companies involved with SEP licensing, including both SEP holders and SEP implementers. They are a predictable and fair option for licensing patented technologies essential for a standard, since they allow an agreement to be reached on a widely acceptable set of licensing terms and conditions between companies from across the world. Since patent pools deal with SEPs, they should also commit to FRAND terms and conditions and they should provide full transparency with regard to the patents that are covered by their portfolio, ideally licence them to all interested licensees regardless of their position in the value chain and preferably include all the SEPs relevant to the standard. |
Amendment 13
Proposal for a regulation
Recital 10 b (new)
| Text proposed by the Commission | Amendment |
| (10b) While competition scrutiny of patent pools has already taken place, the uncertainty over the compatibility of licensee negotiation groups (LNGs) formed by SEP implementers still remains. LNGs can streamline the negotiation process, thereby reducing the administrative burden and ensuring that the licensing terms and conditions are more uniform and equitable for all participating SEP implementers. LNGs benefit SMEs in particular. The Commission should therefore examine the competitive impact of LNGs and analyse which conditions they should fulfil in order to comply with competition law while avoiding the risk of offering ‘hold-out’ options to participating SEP implementers. |
Amendment 14
Proposal for a regulation
Recital 12
| Text proposed by the Commission | Amendment |
| (12) To facilitate the implementation of this regulation, the European Union Intellectual Property Office (EUIPO) should perform the relevant tasks by means of a competence centre. The EUIPO has extensive experience with managing databases, electronic registers and alternative dispute settlement mechanisms, which are key aspects of the functions assigned under this Regulation. It is necessary to equip the competence centre with necessary human and financial resources to fulfil its tasks. | (12) As the agency of the European Union in charge of intellectual property rights and in order to facilitate the implementation of this Regulation, the European Union Intellectual Property Office (EUIPO) should perform the relevant tasks by means of a competence centre. The EUIPO has extensive experience with managing databases, electronic registers and alternative dispute settlement mechanisms, which are key aspects of the functions assigned under this Regulation. It is crucial to ensure that the competence centre has the necessary means, including human and financial resources to effectively perform its tasks. |
Amendment 15
Proposal for a regulation
Recital 12 a (new)
| Text proposed by the Commission | Amendment |
| (12a) SEP licensing may cause friction in the value chains that have so far not been exposed to SEPs. Therefore, it is important that the competence centre raises awareness concerning SEP licensing in the value chain through any of the tools at its disposal, including through a meaningful engagement of stakeholders. Other factors would include the ability of upstream manufacturers to pass the cost of a SEP licence and any potential impact of existing indemnification clauses downstream within a value chain. The framework provided for in this Regulation should promote the EU´s technological leadership in innovation. |
Amendment 16
Proposal for a regulation
Recital 13
| Text proposed by the Commission | Amendment |
| (13) The competence centre should set up and administer an electronic register and an electronic database containing detailed information on SEPs in force in one or more Member States, including essentiality check results, opinions, reports, available case-law from jurisdictions across the globe, rules relating to SEPs in third countries, and results of studies specific to SEPs. In order to raise awareness and facilitate SEP licensing for SMEs, the competence centre should offer assistance to SMEs. The setting up and administering a system for essentiality checks and processes for aggregate royalty determination and FRAND determination by the competence centre should include actions improving the system and the processes on a continuous basis, including through the use of new technologies. In line with this objective, the competence centre should establish training procedures for evaluators of essentiality and conciliators for providing opinions on aggregate royalty as well as on FRAND determination and should encourage consistency in their practices. | (13) The competence centre should on the one hand set up and administer an electronic register containing detailed information on SEPs in force in one or more Member States. The electronic register should serve as a foundational repository designed to be the primary reference point for users, providing basic information about SEPs free of charge. On the other hand, the competence centre should also set up and administer an electronic database providing easily accessible information in a more extensive and comprehensive dataset to which access could be subject to the payment of a reasonable and proportionate fee. Public authorities, including courts, should have access to the information in the database free of charge. Academic institutions should also be able to request access to the information free of charge under certain conditions. The electronic register and the electronic database should offer a high level of legal certainty. |
Amendment 17
Proposal for a regulation
Recital 13 a (new)
| Text proposed by the Commission | Amendment |
| (13a) In order to raise awareness and facilitate SEP licensing for SMEs, the competence centre should offer assistance to SMEs and start-ups. The setting up and administering of a system for essentiality checks and processes for aggregate royalty determination and FRAND determination by the competence centre should include actions improving the system and the processes on a continuous basis, including through the use of new technologies. In line with this objective, the competence centre should establish training procedures for evaluators of essentiality and conciliators for providing opinions on aggregate royalty as well as on FRAND determination and should encourage consistency in their practices. |
Amendment 18
Proposal for a regulation
Recital 14
| Text proposed by the Commission | Amendment |
| (14) The competence centre should be the subject of Union rules on access to documents and data protection. Its tasks should be designed to increase transparency by making existing information relevant to SEPs available to all stakeholders in a centralised and systematic way. Therefore, a balance would have to be made between the free public access to basic information and the need to finance the functioning of the competence centre. In order to cover the maintenance costs a registration fee should be requested to access detailed information contained in the database, such as results of any essentiality checks and non-confidential FRAND determination reports. | (14) The competence centre should be the subject to Union rules on access to documents and data protection. Its tasks should be designed to increase transparency by making existing information relevant to SEPs available to all stakeholders in a centralised and systematic way. Therefore, a balance should be made between the free public access to basic information and the need to finance the functioning of the competence centre. |
Amendment 19
Proposal for a regulation
Recital 15
| Text proposed by the Commission | Amendment |
| (15) Knowledge of the potential total royalty for all SEPs covering a standard (aggregate royalty) applicable to the implementations of that standard is important for the assessment of the royalty amount for a product, which plays a significant role for the manufacturer’s cost determinations. It also helps SEP holder to plan expected return on investment. The publication of the expected aggregate royalty and the standard licensing terms and conditions for a particular standard would facilitate SEP licensing and reduce the cost of SEP licensing. Thus, it is necessary to make public the information on total royalty rates (aggregate royalty) and the standard FRAND terms and conditions of licensing. | (15) Knowledge of the potential total royalty for all SEPs covering a standard (aggregate royalty) applicable to the implementations of that standard is important for the assessment of the royalty amount for a product, which plays a significant role for the manufacturer’s cost determinations. It also helps SEP holders to plan expected return on investment and SEP implementers to estimate the cost of standard integration in their products. The publication of the expected aggregate royalty and the standard licensing terms and conditions for a particular standard would facilitate SEP licensing and reduce the cost of SEP licensing. Thus, SEP implementers and SEP holders would benefit from making public the information on total royalty rates (aggregate royalty) and the standard FRAND terms and conditions of licensing. |
Amendment 20
Proposal for a regulation
Recital 16
| Text proposed by the Commission | Amendment |
| (16) SEP holders should have the opportunity to first inform the competence centre of the publication of the standard or the aggregate royalty which they have agreed upon among themselves. Except for those use cases of standards for which the Commission establishes that there are well established and broadly well-functioning licensing practices of SEPs, the competence centre may assist the parties in the relevant aggregate royalty determination. In this context, if there is no agreement on an aggregate royalty among SEP holders, certain SEP holders may request the competence centre to appoint a conciliator to assist the SEP holders willing to participate in the process in determining an aggregate royalty for the SEPs covering the relevant standard. In this case, the role of the conciliator would be to facilitate the decision-making by the participating SEP holders without making any recommendation for an aggregate royalty. Finally, it is important to ensure that there is a third independent party, an expert, that could recommend an aggregate royalty. Therefore, SEP holders and/or implementers should be able to request the competence centre for an expert opinion on an aggregate royalty. When such a request is made, the competence centre should appoint a panel of conciliators and administer a process in which all interested stakeholders are invited to participate. After receiving information from all of the participants, the panel should provide a non-binding expert opinion for an aggregate royalty. The expert opinion on the aggregate royalty should contain a non-confidential analysis of the expected impact of the aggregate royalty on the SEP holders and the stakeholders in the value chain. Important in this respect would be to consider factors such as, efficiency of SEP licensing, including insights from any customary rules or practices for licensing of intellectual property in the value chain and cross-licensing, and impact on incentives to innovate of SEP holders and different stakeholders in the value chain. | (16) SEP holders should have the opportunity to first inform the competence centre of the publication of the standard in respect of which they claim essentiality or the aggregate royalty which they have agreed upon among themselves. Except for those implementations of standards for which the Commission establishes that there are well established and broadly well-functioning licensing practices of SEPs, the competence centre may assist the parties in the relevant aggregate royalty determination. In this context, if there is no agreement on an aggregate royalty among SEP holders, certain SEP holders may request the competence centre to appoint a conciliator to assist the SEP holders willing to participate in the process in determining an aggregate royalty for the SEPs covering the relevant standard. In this case, the role of the conciliator would be to facilitate the decision-making by the participating SEP holders without making any recommendation for an aggregate royalty. |
Amendment 21
Proposal for a regulation
Recital 16 a (new)
| Text proposed by the Commission | Amendment |
| (16a) SEP holders and SEP implementers should be able to request that the competence centre provides a non-binding expert opinion by an independent third party on an aggregate royalty. When such a request is made, the competence centre should appoint a panel of conciliators and administer a process in which all interested stakeholders are invited to participate. After receiving information from all of the participants, the panel should provide an expert opinion on the aggregate royalty. The expert opinion on the aggregate royalty should contain a non-confidential analysis of the expected impact of the aggregate royalty on the SEP holders and the stakeholders in the value chain. In this respect, it would be important to consider factors such as efficiency of SEP licensing, including insights from any customary rules or practices for licensing of intellectual property in the value chain and cross-licensing, and impact on incentives to innovate of SEP holders and different stakeholders in the value chain. |
Amendment 22
Proposal for a regulation
Recital 17
| Text proposed by the Commission | Amendment |
| (17) In line with the general principles and objectives of transparency, participation and access to European standardisation, the centralised register should make information regarding the number of SEPs applicable to a standard, the ownership of relevant SEPs, and the parts of the standard covered by the SEPs publicly available. The register and the database will contain information on relevant standards, products, processes, services and systems, which implement the standard, SEPs in force in the EU, standard SEP licensing FRAND terms and conditions or any licensing programmes, collective licensing programmes and essentiality. For SEP holders the register will create transparency with regard to the relevant SEPs, their share of all SEPs declared to the standard and the features of the standard covered by the patents. SEP holders will be in a better position to understand how their portfolios compare with other SEP holders’ portfolios. This is important not only for negotiations with implementers but also for the purpose of cross-licensing with other SEP holders. For implementers, the register will provide a trusted source of information on the SEPs, including with regard to the SEP holders from whom the implementer may need to obtain a licence. Making such information available in the register will also help shorten the length of technical discussions during the first stage of the SEP licensing negotiations. | (17) In line with the general principles and objectives of transparency, participation and access to European standardisation, the electronic register should make information regarding the number of SEPs applicable to a standard, the ownership of relevant SEPs, and the parts of the standard covered by the SEPs publicly available. The register and the database will contain information on relevant standards, products, processes, services and systems, which implement the standard, SEPs in force in the EU, standard SEP licensing FRAND terms and conditions or any licensing programmes, collective licensing programmes and essentiality. For SEP holders the register will create transparency with regard to the relevant SEPs, their share of all SEPs declared to the standard and the features of the standard covered by the patents. SEP holders will be in a better position to understand how their portfolios compare with other SEP holders’ portfolios. This is important not only for negotiations with implementers but also for the purpose of cross-licensing with other SEP holders. For implementers, the register will provide a trusted source of information on the SEPs, including with regard to the SEP holders from whom the implementer may need to obtain a licence. Making such information available in the register will also help shorten the length of technical discussions during the first stage of the SEP licensing negotiations. |
Amendment 23
Proposal for a regulation
Recital 19
| Text proposed by the Commission | Amendment |
| (19) In order to ensure transparency of about SEPs, it is appropriate to require from SEP holders to register their patents which are essential to the standard for which the registration is open. SEP holders should register their SEPs within 6 months following the opening of the registration by the competence centre or the grant of the relevant SEPs, whichever is first. In case of timely registration, SEPs holders should be able to collect royalties and claim damages for uses and infringements that happened before the registration. | (19) In order to ensure transparency of about SEPs, it is appropriate to require from SEP holders to register their patents which are essential to the standard for which the registration is open. SEP holders should register their SEPs within 6 months following the opening of the registration by the competence centre or the grant of the relevant SEPs, whichever is first. SEP holders may collect royalties even if their SEP is not registered, but they should only be able to claim damages for uses and infringements that happened before the registration in case of timely registration, provided that the amount thereof has been established in accordance with the FRAND determination rules set out in this Regulation. |
Amendment 24
Proposal for a regulation
Recital 20
| Text proposed by the Commission | Amendment |
| (20) SEP holders may register after the indicated time limit. However, in that case, SEP holders should not be able to collect royalties and claim damages for the period of delay. | (20) In case of failure by SEP holders to register within the indicated time limit, the competence centre should notify the SEP holder that, in case of further delays in registering its patents, following a grace period of 1 month, the SEP holder should not be able to bring a claim in relation to its patent until the registration is completed. |
Amendment 25
Proposal for a regulation
Recital 22
| Text proposed by the Commission | Amendment |
| (22) SEP holders should ensure that their SEP registration(s) are updated. Updates should be registered within 6 months for relevant status changes, including ownership, invalidation findings or other applicable changes resulting from contractual commitments or public authorities’ decisions. Failure to update the registration may lead to the suspension of the registration of the SEP from the register. | (22) SEP holders should ensure that their SEP registration(s) are updated. Updates should be registered within 6 months for relevant status changes, including ownership, invalidation findings or other applicable changes resulting from contractual commitments or public authorities’ decisions. In case of failure to update the registration, the competence centre should notify the SEP holder that in case of further delays in updating its registration, following a grace period of 1 month, its SEP may be suspended. |
Amendment 26
Proposal for a regulation
Recital 23
| Text proposed by the Commission | Amendment |
| (23) A SEP holder may also request the modification of a SEP registration. An interested stakeholder may also request the modification of a SEP registration, if it can demonstrate that the registration is inaccurate based on a definitive decision by a public authority. A SEP can only be removed from the register at the request of the SEP holder, if the patent is expired, was invalidated or found non-essential by a final decision or ruling of a competent court of a Member State or found non-essential under this Regulation. | (23) A SEP holder may also request the modification of a SEP registration. An interested stakeholder may also request the modification of a SEP registration, if it can demonstrate that the registration is inaccurate based on a definitive decision by a public authority. A SEP can only be removed from the register at the request of the SEP holder, if the patent is expired, was invalidated or found non-essential by a final decision or ruling of a competent court of a Member State or found non-essential under this Regulation. To ensure transparency, a record of any modifications to the SEP registration should be made publicly available. |
Amendment 27
Proposal for a regulation
Recital 23 a (new)
| Text proposed by the Commission | Amendment |
| (23a) It is necessary to ensure that the registration and the obligations provided for in this Regulation are not circumvented by removing a SEP from the register. When an evaluator finds a claimed SEP non-essential, only the SEP holder can request its removal from the register and only after the annual sampling process has been completed and the proportion of true SEPs from the sample has been established and published. |
Amendment 28
Proposal for a regulation
Recital 24
| Text proposed by the Commission | Amendment |
| (24) To further ensure the quality of the register and avoid over-registration, essentiality checks should also be conducted randomly by independent evaluators selected according to objective criteria to be determined by the Commission. Only one SEP from the same patent family should be checked for essentiality. | (24) To further ensure the quality of the register and avoid over-registration, essentiality checks should also be conducted randomly by independent and impartial evaluators selected according to objective criteria to be determined by the Commission. Only one SEP from the same patent family should be checked for essentiality. |
Amendment 29
Proposal for a regulation
Recital 26
| Text proposed by the Commission | Amendment |
| (26) SEP holders or implementers may also designate annually up to 100 registered SEPs for essentiality checks. If the pre-selected SEPs are confirmed essential, the SEP holders may use this information in negotiations and as evidence in courts, without prejudicing the right of an implementer to challenge the essentiality of a registered SEP in court. The selected SEPs would have no bearing on the sampling process as the sample should be selected from all registered SEPs of each SEP holder. If a preselected SEP and a SEP selected for the sample set are the same, only one essentiality check should be done. Essentiality checks should not be repeated on SEPs from the same patent family. | (26) SEP holders may voluntarily submit their SEPs for essentiality checks to the competence centre prior to registering their patents. After the registration, SEP holders or implementers may also designate annually up to 100 registered SEPs for essentiality checks. If the pre-selected SEPs are confirmed essential, the SEP holders may use this information in negotiations and as evidence in courts, without prejudicing the right of an implementer to challenge the essentiality of a registered SEP in court. The selected SEPs would have no bearing on the sampling process as the sample should be selected from all registered SEPs of each SEP holder. If a preselected SEP and a SEP selected for the sample set are the same, only one essentiality check should be done. Essentiality checks should not be repeated on SEPs from the same patent family. |
Amendment 30
Proposal for a regulation
Recital 27
| Text proposed by the Commission | Amendment |
| (27) Any assessment of essentiality of SEPs conducted by an independent entity prior to the entry into force of the Regulation, for example through patent pools, as well as essentiality determinations by judicial authorities should be indicated in the register. Those SEPs should not be re-checked for essentiality after the relevant evidence supporting the information in the register is provided to the competence centre. | (27) Assessments of essentiality of SEPs conducted by an independent entity prior to the entry into force of the Regulation, for example through patent pools, as well as essentiality determinations by judicial authorities should be indicated in the register. Those SEPs should not be re-checked for essentiality after the relevant evidence supporting the information in the register is provided to the competence centre unless the evaluator has objective reasons to believe, based on sufficient evidence, that the prior essentiality check was inaccurate. SEP holders or patent pools should also be able to conduct the assessment of essentiality of SEPs after the entry into force of this Regulation. |
Amendment 31
Proposal for a regulation
Recital 29
| Text proposed by the Commission | Amendment |
| (29) The competence centre would publish the results of the essentiality checks, whether positive or negative, in the register and the database. The results of the essentiality checks would not be legally binding. Thus, any subsequent disputes with regard to essentiality would have to be addressed in the relevant court. The results from the essentiality checks, whether requested by a SEP holder or based on a sample, may, however, be used for the purpose of demonstrating essentiality of those SEPs in negotiations, in patent pools and in court. | (29) The competence centre would publish the results of the essentiality checks, whether positive or negative, in the register and the database. The results of the essentiality checks would not be legally binding. Thus, it should be possible to address any subsequent disputes with regard to essentiality to the competent court. The results from the essentiality checks, whether requested by a SEP holder or based on a sample, may, however, be used for the purpose of demonstrating essentiality of those SEPs or other relevant criteria in negotiations, in patent pools and in court. |
Amendment 32
Proposal for a regulation
Recital 30
| Text proposed by the Commission | Amendment |
| (30) It is necessary to ensure that the registration and ensuing obligations provided for in this Regulation are not circumvented by removing a SEP from the register. When an evaluator finds a claimed SEP non-essential, only the SEP holder can request its removal from the register and only after the annual sampling process has been completed and the proportion of true SEPs from the sample has been established and published. | deleted |
Amendment 33
Proposal for a regulation
Recital 31
| Text proposed by the Commission | Amendment |
| (31) The purpose of the FRAND commitment is to facilitate adoption and use of the standard by making SEPs available to implementers on fair and reasonable terms and to provide the SEP holder a fair and reasonable return for its innovation. Thus, the ultimate goal of enforcement actions by SEP holders or actions brought by implementers based on a SEP holder’s refusal to license should be to conclude a FRAND licence agreement. The main objective of the Regulation in this regard is to facilitate the negotiations and out of court dispute resolution that can benefit both parties. Ensuring access to swift, fair and cost-efficient ways of resolving disputes on FRAND terms and conditions should benefit SEP holders and implementers alike. As such, a properly functioning out-of-court dispute resolution mechanism to determine FRAND terms (FRAND determination) may offer significant benefits for all parties. A party may request a FRAND determination in order to demonstrate that its offer is FRAND or to provide a security, when they engage in good faith. | (31) The purpose of the FRAND commitment is to facilitate adoption and use of the standard by making SEPs available to implementers on fair, reasonable and non-discriminatory terms and to provide the SEP holder a fair and reasonable return for its innovation. Thus, the ultimate goal of enforcement actions by SEP holders or actions brought by implementers based on a SEP holder’s refusal to license should be to conclude a FRAND licence agreement. The main objective of the Regulation in this regard is to facilitate the negotiations and out of court dispute resolution that can benefit both parties. Ensuring access to swift, fair and cost-efficient ways of resolving disputes on FRAND terms and conditions should benefit SEP holders and implementers alike. As such, a properly functioning out-of-court dispute resolution mechanism to determine FRAND terms (FRAND determination) may offer significant benefits for all parties. A party may request a FRAND determination in order to demonstrate that its offer is FRAND or to provide a security, when they engage in good faith. |
Amendment 34
Proposal for a regulation
Recital 32
| Text proposed by the Commission | Amendment |
| (32) The FRAND determination should simplify and speed up negotiations concerning FRAND terms and reduce costs. The EUIPO should administer the procedure. The competence centre should create a roster of conciliators that satisfy established competence and independence criteria, as well as a repository of non-confidential reports (the confidential version of the reports will be accessible only by the parties and the conciliators). The conciliators should be neutral persons with extensive experience in dispute resolution and substantial understanding of the economics of licensing on FRAND terms and conditions. | (32) The FRAND determination should simplify and speed up negotiations concerning FRAND terms and conditions and reduce transaction costs for all stakeholders. The EUIPO should administer the procedure. The competence centre should create a roster of conciliators that satisfy established competence and independence criteria, as well as a repository of non-confidential reports (the confidential version of the reports will be accessible only by the parties and the conciliators). The conciliators should be neutral and impartial persons with extensive experience in dispute resolution and substantial understanding of the economics of licensing on FRAND terms and conditions. There should be rules and procedures defining conflicts of interests and mechanisms for addressing any such conflicts that might arise. |
Amendment 35
Proposal for a regulation
Recital 33
| Text proposed by the Commission | Amendment |
| (33) The FRAND determination would be a mandatory step before a SEP holder would be able to initiate patent infringement proceedings or an implementer could request a determination or assessment of FRAND terms and conditions concerning a SEP before a competent court of a Member State. However, the obligation to initiate FRAND determination before the relevant court proceedings should not be required for SEPs covering those use cases of standards for which the Commission establishes that there are no significant difficulties or inefficiencies in licensing on FRAND terms. | (33) In case one or more parties initiate a FRAND determination, it should be a mandatory step before a SEP holder would be able to initiate patent infringement proceedings or an implementer could request a determination or assessment of FRAND terms and conditions concerning a SEP before a competent court of a Member State. However, the obligation to initiate FRAND determination before the relevant court proceedings should not be required for SEPs covering those implementations of standards for which the Commission establishes that there are no significant difficulties or inefficiencies in licensing on FRAND terms. |
Amendment 36
Proposal for a regulation
Recital 34
| Text proposed by the Commission | Amendment |
| (34) Each party may choose whether it wishes to engage in the procedure and commit to comply with its outcome. Where a party does not reply to the FRAND determination request or does not commit to comply with the outcome of the FRAND determination, the other party should be able to request either the termination or the unilateral continuation of the FRAND determination. Such a party should not be exposed to litigation during the time of the FRAND determination. At the same time, the FRAND determination should be an effective procedure for the parties to reach agreement before litigation or to obtain a determination to be used in further proceedings. Therefore, the party or parties that commit to complying with the outcome of the FRAND determination and duly engage in the procedure should be able to benefit from its completion. | (34) Where a party does not reply to the FRAND determination request, the other party should be able to request either the termination or the unilateral continuation of the FRAND determination. Such a party should not be exposed to litigation during the time of the FRAND determination. At the same time, the FRAND determination should be an effective procedure for the parties to meet on neutral ground, such as before a panel of conciliators and reach agreement before litigation or to obtain a determination to be used in further proceedings. Therefore, the party or parties that duly engage in the procedure should be able to benefit from its completion. |
Amendment 37
Proposal for a regulation
Recital 35
| Text proposed by the Commission | Amendment |
| (35) The obligation to initiate FRAND determination should not be detrimental to the effective protection of the parties’ rights. In that respect, the party that commits to comply with the outcome of the FRAND determination while the other party fails to do so should be entitled to initiate proceedings before the competent national court pending the FRAND determination. In addition, either party should be able to request a provisional injunctionof a financial nature before the competent court. In a situation where a FRAND commitment has been given by the relevant SEP holder, provisional injunctions of an adequate and proportionate financial nature should provide the necessary judicial protection to the SEP holder who has agreed to license its SEP on FRAND terms, while the implementer should be able to contest the level of FRAND royalties or raise a defence of lack of essentiality or of invalidity of the SEP. In those national systems that require the initiation of the proceedings on the merits of the case as a condition to request the interim measures of a financial nature, it should be possible to initiate such proceedings, but the parties should request that the case be suspended during the FRAND determination. When determining what level of the provisional injunction of financial nature is to be deemed adequate in a given case, account should be taken, inter alia, of the economic capacity of the applicant and the potential effects for the effectiveness of the measures applied for, in particular for SMEs, also in order to prevent the abusive use of such measures. It should also be clarified that once the FRAND determination is terminated, the whole range of measures, including provisional, precautionary and corrective measures, should be available to parties. | (35) The obligation to initiate FRAND determination should not be detrimental to the effective protection of the parties’ rights. The parties should be able to request a provisional injunction of a financial nature before the competent court. In a situation where a FRAND commitment has been given by the relevant SEP holder, provisional injunctions of an adequate and proportionate financial nature should provide the necessary judicial protection to the SEP holder who has agreed to license its SEP on FRAND terms, while the implementer should be able to contest the level of FRAND royalties or raise a defence of lack of essentiality or of invalidity of the SEP. In those national systems that require the initiation of the proceedings on the merits of the case as a condition to request the interim measures of a financial nature, it should be possible to initiate such proceedings, but the parties should request that the case be suspended during the FRAND determination. When determining what level of the provisional injunction of financial nature is to be deemed adequate in a given case, account should be taken, inter alia, of the economic capacity of the applicant and the potential effects for the effectiveness of the measures applied for, in particular for SMEs, also in order to prevent the abusive use of such measures. It should also be clarified that once the FRAND determination is terminated, the whole range of measures, including provisional, precautionary and corrective measures, should be available to parties. |
Amendment 38
Proposal for a regulation
Recital 36
| Text proposed by the Commission | Amendment |
| (36) When the parties enter into the FRAND determination, they should select a conciliator for the FRAND determination from the roster. In case of disagreement, the competence centre would select the conciliator. The FRAND determination should be concluded within 9 months. This time would be necessary for a procedure that ensures that the rights of the parties are respected and at the same time is sufficiently swift to avoid delays in concluding licences. Parties may settle at any time during the process, which results in the termination of the FRAND determination. | (36) When the parties enter into the FRAND determination, they should select a panel of conciliators for the FRAND determination from the roster. In case of disagreement, the competence centre would select the members of the panel of conciliators. The FRAND determination should be concluded within 9 months. This time would be necessary for a procedure that ensures that the rights of the parties are respected and at the same time is sufficiently swift to avoid delays in concluding licences. Parties may settle at any time during the process, which results in the termination of the FRAND determination. |
Amendment 39
Proposal for a regulation
Recital 37
| Text proposed by the Commission | Amendment |
| (37) Upon appointment, the conciliation centre should refer the FRAND determination to the conciliator, who should examine whether the request contains the necessary information, and communicate the schedule of procedure to the parties or the party requesting the continuations of the FRAND determination. | (37) Upon appointment, the conciliation centre should refer the FRAND determination to the panel of conciliators, who should examine whether the request contains the necessary information, and communicate the schedule of procedure to the parties or the party requesting the continuations of the FRAND determination. |
Amendment 40
Proposal for a regulation
Recital 38
| Text proposed by the Commission | Amendment |
| (38) The conciliator should examine the parties’ submissions and suggestions for the determination of FRAND terms and conditions, and consider the relevant negotiation steps, among other relevant circumstances. The conciliator, upon its own initiative or the request of a party, should be able to require the parties to submit evidence it deems necessary for the fulfilment of its task. It should also be able to examine publicly available information and the competence centre’s register and reports of other FRAND determinations, as well as non-confidential documents and information produced by or submitted to the competence centre. | (38) The panel of conciliators should examine the parties’ submissions and suggestions for the determination of FRAND terms and conditions, and consider the relevant negotiation steps, among other relevant circumstances. The panel of conciliators, upon its own initiative or the request of a party, should be able to require the parties to submit evidence it deems necessary for the fulfilment of its task. It should also be able to examine publicly available information and the competence centre’s register and reports of other FRAND determinations, as well as non-confidential documents and information produced by or submitted to the competence centre. |
Amendment 41
Proposal for a regulation
Recital 39
| Text proposed by the Commission | Amendment |
| (39) If a party fails to engage in the FRAND determination after the conciliator has been appointed, the other party may request the termination or may request that the conciliator issues a recommendation for a FRAND determination on the basis of the information it was able to assess. | (39) If a party fails to engage in the FRAND determination after the panel of conciliators has been appointed, the other party may request the termination or may request that the conciliator issues a recommendation for a FRAND determination on the basis of the information it was able to assess. |
Amendment 42
Proposal for a regulation
Recital 40
| Text proposed by the Commission | Amendment |
| (40) If a party initiates a procedure in a jurisdiction outside the Union resulting in legally binding and enforceable decisions regarding the same standard that is subject to FRAND determination and its implementation, or including SEPs from the same patent family as SEPs subject to FRAND determination and involving one or more of the parties to the FRAND determination as a party; before or during of the FRAND determination by a party, the conciliator, or where he/she has not been appointed has not been established, the competence centre, should be able to terminate the procedure upon the request of the other party. | (40) If a party initiates a procedure in a jurisdiction outside the Union resulting in legally binding and enforceable decisions regarding the same standard that is subject to FRAND determination and its implementation, or including SEPs from the same patent family as SEPs subject to FRAND determination and involving one or more of the parties to the FRAND determination as a party; before or during of the FRAND determination by a party, the panel of conciliators, or where it has not been appointed has not been established, the competence centre, should be able to terminate the procedure upon the request of the other party. |
Amendment 43
Proposal for a regulation
Recital 41
| Text proposed by the Commission | Amendment |
| (41) At the conclusion of the procedure, the conciliator should make a proposal recommending FRAND terms and conditions. Either party should have the option to accept or reject the proposal. If the parties do not settle and/or do not accept its proposal, the conciliator should draft a report of the FRAND determination. The report would have a confidential and a non-confidential version. The non-confidential version of the report should contain the proposal for FRAND terms and conditions and the methodology used and should be provided to the competence centre for publication in order to inform any subsequent FRAND determination between the parties and other stakeholders involved in similar negotiations. The report would thus have a dual purpose to encourage the parties to settle and to provide transparency as to the process and the recommended FRAND terms in cases of disagreement. | (41) At the conclusion of the procedure, the panel of conciliators should make a proposal recommending FRAND terms and conditions. Either party should have the option to accept or reject the proposal. If the parties do not settle and/or do not accept its proposal, the panel of conciliators should draft a report of the FRAND determination. The report would have a confidential and a non-confidential version. The non-confidential version of the report should contain the proposal for FRAND terms and conditions and the methodology used and should be provided to the competence centre for publication in order to inform any subsequent FRAND determination between the parties and other stakeholders involved in similar negotiations. The report would thus have a dual purpose to encourage the parties to settle and to provide transparency as to the process and the recommended FRAND terms in cases of disagreement. |
Amendment 44
Proposal for a regulation
Recital 42
| Text proposed by the Commission | Amendment |
| (42) The Regulation respects the intellectual property rights of patent owners (Article 17(2) of EU Charter of Fundamental Rights), although it includes a restriction on the ability to enforce a SEP that has not been registered within a certain time-limit and introduces a requirement to conduct a FRAND determination before enforcing individual SEPs. The limitation on the exercise of intellectual property rights is allowed under the EU Charter, provided that the proportionality principle is respected. According to settled case-law, fundamental rights can be restricted provided that those restrictions correspond to objectives of general interest pursued by the Union and do not constitute, with regard to the aim pursued, a disproportionate and intolerable interference which infringes the very essence of the rights guaranteed39 . In that respect, this Regulation is in the public interest in that it provides a uniform, open and predictable information and outcome on SEPs for the benefit of SEP holder, implementers and end users, at Union level. It aims at dissemination of technology for the mutual advantage of the SEP holders and implementers. Furthermore, the rules concerning the FRAND determination are temporary thus limited and aimed at improving and streamlining the process but are not ultimately binding.40 | (42) The Regulation respects the intellectual property rights of patent owners, in line with Article 17(2) of EU Charter of Fundamental Rights, although it includes a restriction on the ability to enforce a SEP that has not been registered within a certain time-limit and introduces a requirement to conduct a FRAND determination before enforcing individual SEPs. The limitation on the exercise of intellectual property rights is allowed under the EU Charter, provided that the proportionality principle is respected. According to settled case-law, fundamental rights can be restricted provided that those restrictions correspond to objectives of general interest pursued by the Union and do not constitute, with regard to the aim pursued, a disproportionate and intolerable interference which infringes the very essence of the rights guaranteed39 . In that respect, this Regulation is in the public interest in that it provides a uniform, open and predictable information and outcome on SEPs for the benefit of SEP holder, implementers and end users, at Union level. It aims at dissemination of technology for the mutual advantage of the SEP holders and implementers. Furthermore, the rules concerning the FRAND determination are temporary thus limited and aimed at improving and streamlining the process but are not ultimately binding.40 |
| __________________ | __________________ |
| 39 Judgment of the Court of Justice of 13 December 1979, Hauer v. Land Rheinland-Pfalz, C-44/79, EU:C:1979:290, para. 32; judgment of the Court of Justice of 11 July 1989, Hermann Schräder HS Kraftfutter GmbH & Co. KG v. Hauptzollamt Gronau, C-256/87, EU:C:1999:332, para. 15, and judgment of the Court of Justice of 13 July 1989, Hubert Wachauf v. Bundesamt für Ernährung und Forstwirtschaft, C-5/88, EU:C:1989:321, paras. 17 and 18. | 39 Judgment of the Court of Justice of 13 December 1979, Hauer v. Land Rheinland-Pfalz, C-44/79, EU:C:1979:290, para. 32; judgment of the Court of Justice of 11 July 1989, Hermann Schräder HS Kraftfutter GmbH & Co. KG v. Hauptzollamt Gronau, C-256/87, EU:C:1999:332, para. 15, and judgment of the Court of Justice of 13 July 1989, Hubert Wachauf v. Bundesamt für Ernährung und Forstwirtschaft, C-5/88, EU:C:1989:321, paras. 17 and 18. |
| 40 The conciliation procedure follows the conditions for mandatory recourse to alternative dispute settlement procedures as a condition for the admissibility of an action before the courts, as outlined in the CJEU judgments; Joint Cases C-317/08 to C-320/08 Alassini and Others of 18 March 2010, and Case C-75/16 Menini and Rampanelli v. Banco Popolare Società Cooperativa of 14 June 2017, taking into account the specificities of SEP licensing. | 40 The conciliation procedure follows the conditions for mandatory recourse to alternative dispute settlement procedures as a condition for the admissibility of an action before the courts, as outlined in the CJEU judgments; Joint Cases C-317/08 to C-320/08 Alassini and Others of 18 March 2010, and Case C-75/16 Menini and Rampanelli v. Banco Popolare Società Cooperativa of 14 June 2017, taking into account the specificities of SEP licensing. |
Amendment 45
Proposal for a regulation
Recital 43
| Text proposed by the Commission | Amendment |
| (43) The FRAND determination is also consistent with the right to an effective remedy and to access to justice as laid down in Article 47 of the Charter of Fundamental Rights of the European Union as the implementer and the SEP holder fully retain that right. In case of failure to register within the prescribed time limit, the exclusion of the right to effective enforcement is limited and necessary and meets objectives of general interest. As confirmed by the CJEU41 , the provision of a mandatory dispute resolution as a precondition to access to competent courts of Member States is deemed to be compatible with the principle of effective judicial protection. The FRAND determination follows the conditions for mandatory dispute resolution outlined in the CJEU judgments, taking into account the particular characteristics of SEP licensing. | (43) The FRAND determination is also consistent with the right to an effective remedy and to access to justice as laid down in Article 47 of the Charter of Fundamental Rights of the European Union as the implementer and the SEP holder fully retain that right. In case of failure to register within the prescribed time limit, the exclusion of the right to effective enforcement is limited and necessary and meets objectives of general interest. As confirmed by the CJEU41 , the provision of a mandatory dispute resolution as a precondition to access to competent courts of Member States is deemed to be compatible with the principle of effective judicial protection. The FRAND determination follows the conditions for mandatory dispute resolution outlined in the CJEU judgments, taking into account the particular characteristics of SEP licensing. The FRAND determination procedure also allows a deposit of a bond by the alleged infringer as a provisional injunction of a financial nature, which can be requested in order to avoid seriously restricting the alleged infringer’s activity and ensuring that the other party receives the corresponding sum in the event of a claim for damages. Moreover, the FRAND determination in no way impairs the SEP holder’s ability to receive compensation for an infringement that occurred during the FRAND determination in subsequent court proceedings. |
| __________________ | __________________ |
| 41 Judgment of the Court of Justice of 18 March 2010, Rosalba Alassini v Telecom Italia SpA (C-317/08), Filomena Califano v Wind SpA (C-318/08), Lucia Anna Giorgia Iacono v Telecom Italia SpA (C-319/08) and Multiservice Srl v Telecom Italia SpA (C-320/08), Joined cases C-317/08, C-318/08, C-319/08 and C-320/08, EU:C:2010:146, and judgement of the Court of Justice of 14 June 2017,Livio Menini and Maria Antonia Rampanelli v Banco Popolare – Società Cooperativa, C-75/16, EU:C:2017:457 | 41 Judgment of the Court of Justice of 18 March 2010, Rosalba Alassini v Telecom Italia SpA (C-317/08), Filomena Califano v Wind SpA (C-318/08), Lucia Anna Giorgia Iacono v Telecom Italia SpA (C-319/08) and Multiservice Srl v Telecom Italia SpA (C-320/08), Joined cases C-317/08, C-318/08, C-319/08 and C-320/08, EU:C:2010:146, and judgement of the Court of Justice of 14 June 2017,Livio Menini and Maria Antonia Rampanelli v Banco Popolare – Società Cooperativa, C-75/16, EU:C:2017:457 |
Amendment 46
Proposal for a regulation
Recital 44
| Text proposed by the Commission | Amendment |
| (44) When determining the aggregate royalties and making FRAND determinations the conciliators should take into account in particular any Union acquis and judgments of the Court of Justice pertaining to SEPs as well as guidance issued under this Regulation, the Horizontal Guidelines42 and the Commission’s 2017 Communication ‘Setting out the EU approach to Standard Essential Patents’.43 Furthermore, the conciliators should consider any expert opinion on the aggregate royalty or in the absence thereof, should request information from the parties before it makes its final proposals well as guidance issued under this Regulation, as well as guidance issued under this Regulation. | (44) When determining the aggregate royalties and making FRAND determinations the conciliators should take into account in particular any Union acquis and judgments of the Court of Justice pertaining to SEPs as well as guidance issued under this Regulation, the Horizontal Guidelines42 and the Commission’s 2017 Communication ‘Setting out the EU approach to Standard Essential Patents’.43 Furthermore, the panel of conciliators should consider any expert opinion on the aggregate royalty or in the absence thereof, should request information from the parties before it makes its final proposals well as guidance issued under this Regulation, as well as guidance issued under this Regulation. |
| __________________ | __________________ |
| 42 Communication from the Commission – Guidelines on the applicability of Article 101 of the Treaty on the Functioning of the European Union to horizontal co-operation agreements, OJ C 11, 14.01.2011, pp. 1 (currently under review) | 42 Communication from the Commission – Guidelines on the applicability of Article 101 of the Treaty on the Functioning of the European Union to horizontal co-operation agreements, OJ C 11, 14.01.2011, pp. 1 (currently under review) |
| 43 Communication on Setting out the EU approach to Standard Essential Patents, COM(2017)712 final, 29.11.2017. | 43 Communication on Setting out the EU approach to Standard Essential Patents, COM(2017)712 final, 29.11.2017. |
Amendment 47
Proposal for a regulation
Recital 45
| Text proposed by the Commission | Amendment |
| (45) SEP licensing may cause friction in the value chains that have so far not been exposed to SEPs. It is, therefore, important that the competence centre raises awareness concerning SEP licensing in the value chain through any of the tools at its disposal. Other factors would include the ability of upstream manufacturers to pass the cost of a SEP licence downstream and any potential impact of existing indemnification clauses within a value chain. | deleted |
Amendment 48
Proposal for a regulation
Recital 45 a (new)
| Text proposed by the Commission | Amendment |
| (45a) In order to avoid a possible negative impact on companies which are established in the Union as well as engage and compete successfully as regards the development of global technologies through standardisation, the Commission should evaluate the impact that the essentiality check system, the aggregate royalties determination system and the FRAND determination system have on the competitiveness of Union SEP holders on a global level. Based on the outcome of that evaluation, the Commission should, where necessary, present a legislative proposal in order to adapt the systems. The role of patent pools, including those created by SEP implementers, should be evaluated by the Commission in order to assess their impact once this Regulation has entered into force, notably in terms of their impact on the competitiveness on the market. |
Amendment 49
Proposal for a regulation
Recital 46
| Text proposed by the Commission | Amendment |
| (46) SMEs may be involved in SEP licensing both as SEP holders and implementers. While there are currently a few SME SEP holders, the efficiencies produced with this Regulation are likely to facilitate the licensing of their SEP. Additional conditions are necessary to relieve the cost burden on such SMEs such as reduced administration fees and potentially reduced fees for essentiality checks and conciliation in addition to free support and trainings. The SEPs of micro and small enterprises should not be the subject of sampling for essentiality check, but they should be able to propose SEPs for essentiality checks if they wish to. SME implementers should likewise benefit from reduced access fees and free support and trainings. Finally, SEP holders should be encouraged to incentivise licensing by SMEs through low volume discounts or exemptions from FRAND royalties. | (46) SMEs may be involved in SEP licensing both as SEP holders and SEP implementers. While there are currently a few SME SEP holders, the efficiencies produced with this Regulation should also facilitate the licensing of their SEP. Additional conditions are necessary to relieve the cost burden on such SMEs such as reduced administration burdens and administrative fees and potentially reduced fees for essentiality checks and conciliation in addition to free support and trainings, so that they are better placed to engage in SEP related matters and also standard development. The SEPs of micro and small enterprises and start-ups should not be the subject of sampling for essentiality check, but they should be able to propose SEPs for essentiality checks if they wish to. SME and start-up implementers should likewise benefit from reduced access fees and free support and trainings. Finally, SEP holders should be encouraged to incentivise licensing by SMEs through low volume discounts or exemptions from FRAND royalties. In this context, it is important to ensure that SMEs and start-ups benefit from a one-stop shop set up by the competence centre which identifies relevant licensees and licensors for the SMEs and advises them, free of charge, on SEPs. To that end, the competence centre should set up a SEP Licensing Assistance Hub for SMEs and start-ups which could also provide, under certain conditions, assistance with regard to judicial support, such as a pro bono legal representative during court proceedings. |
Amendment 50
Proposal for a regulation
Recital 46 a (new)
| Text proposed by the Commission | Amendment |
| (46a) While advantages should be granted to SMEs, they should not be susceptible to misuses. In this regard, patent assertion entities, which may be characterised by an “obtain and assert” business model and which have the purpose of generating revenues through licensing fees, royalties and damage compensation, should not benefit from exemptions and the help from the competence centre provided for in this Regulation. |
Amendment 51
Proposal for a regulation
Recital 46 b (new)
| Text proposed by the Commission | Amendment |
| (46b) The support mechanisms, such as IP vouchers for SMEs, have been effective in assisting SMEs to protect their IP rights. The period of application of those mechanisms should be prolonged beyond 2024. |
Amendment 52
Proposal for a regulation
Recital 47
| Text proposed by the Commission | Amendment |
| (47) In order to supplement certain non-essential elements of this Regulation, the power to adopt acts, in accordance with Article 290 of the Treaty on the Functioning of the European Union, should be delegated to the Commission in respect of the items to be entered in the register or in respect of determining the relevant existing standards or to identify use cases of standards or parts thereof for which the Commission establishes that there are no significant difficulties or inefficiencies in licensing on FRAND terms. It is of particular importance that the Commission carry out appropriate consultations during its preparatory work, including at expert level, and that those consultations be conducted in accordance with the principles laid down in the Interinstitutional Agreement of 13 April 2016 on Better Law-Making44. In particular, to ensure equal participation in the preparation of delegated acts, the European Parliament and the Council receive all documents at the same time as Member States’ experts, and their experts systematically have access to meetings of Commission expert groups dealing with the preparation of delegated acts. | (47) In order to supplement certain non-essential elements of this Regulation, the power to adopt acts, in accordance with Article 290 of the Treaty on the Functioning of the European Union, should be delegated to the Commission in respect of the items to be entered in the register or in respect of determining the relevant existing standards or to identify implementations of standards or parts thereof for which the Commission establishes that there are no significant difficulties or inefficiencies in licensing on FRAND terms. It is of particular importance that the Commission carry out appropriate consultations during its preparatory work, including at expert level, and that those consultations be conducted in accordance with the principles laid down in the Interinstitutional Agreement of 13 April 2016 on Better Law-Making44. In particular, to ensure equal participation in the preparation of delegated acts, the European Parliament and the Council receive all documents at the same time as Member States’ experts, and their experts systematically have access to meetings of Commission expert groups dealing with the preparation of delegated acts. |
| __________________ | __________________ |
| 44 OJ L 123, 12.5.2016, p. 1. | 44 OJ L 123, 12.5.2016, p. 1. |
Amendment 53
Proposal for a regulation
Recital 48
| Text proposed by the Commission | Amendment |
| (48) In order to ensure uniform conditions for the implementation of the relevant provisions of this Regulation, implementing powers should be conferred on the Commission to adopt the detailed requirements for the selection of evaluators and conciliators, as well as adopt the rules of procedure and Code of Conduct for evaluators and conciliators. The Commission should also adopt the technical rules for the selection of a sample of SEPs for essentiality checks and the methodology for the conduct of such essentiality checks by evaluators and peer evaluators. The Commission should also determine any administrative fees for its services in relation to the tasks under this Regulation and fees for the services evaluators, experts and conciliators, derogations thereof and payment methods and adapt them as necessary. The Commission should also determine the standards or parts thereof that have been published before the entry into force of this Regulation, for which SEPs can be registered. Those powers should be exercised in accordance with Regulation (EU) No 182/2011 of the European Parliament and of the Council.45 | (48) In order to ensure uniform conditions for the implementation of the relevant provisions of this Regulation, implementing powers should be conferred on the Commission to adopt the detailed requirements for the selection of evaluators and conciliators, as well as adopt the rules of procedure and Code of Conduct for evaluators and conciliators. Evaluators and conciliators should be of good repute and possess sufficient knowledge, skills and experience to perform their duties. The Commission should also adopt the technical rules for the selection of a sample of SEPs for essentiality checks and the methodology for the conduct of such essentiality checks by evaluators and peer evaluators. The Commission should also determine any administrative fees for its services in relation to the tasks under this Regulation and fees for the services of evaluators, experts and conciliators, derogations thereof and payment methods and adapt them as necessary. The Commission should also determine the standards or parts thereof that have been published before the entry into force of this Regulation, for which SEPs can be registered. Those powers should be exercised in accordance with Regulation (EU) No 182/2011 of the European Parliament and of the Council.45 |
| __________________ | __________________ |
| 45 Regulation (EU) No 182/2011 of the European Parliament and of the Council laying down the rules and general principles concerning mechanisms for control by the Member States of the Commission’s exercise of implementing powers (OJ L 55, 28.2.2011, p. 13.) | 45 Regulation (EU) No 182/2011 of the European Parliament and of the Council laying down the rules and general principles concerning mechanisms for control by the Member States of the Commission’s exercise of implementing powers (OJ L 55, 28.2.2011, p. 13.) |
Amendment 54
Proposal for a regulation
Article 1 – paragraph 2 – introductory part
| Text proposed by the Commission | Amendment |
| 2. This Regulation shall apply to patents that are essential to a standard that has been published by a standard development organisation, to which the SEP holder has made a commitment to license its SEPs on fair, reasonable and non-discriminatory (FRAND) terms and conditions and that is not subject to a royalty-free intellectual property policy, | 2. This Regulation shall apply to patents that are in force in one or more Member States and that a SEP holder claims to be essential to a standard that has been published by a standard development organisation, after entry into force of this Regulation regardless of whether the SEP holder has or has not made a commitment to license its SEPs on fair, reasonable and non-discriminatory (FRAND) terms and conditions. |
| (a) after the entry into force of this Regulation, with the exceptions provided in paragraph 3; | |
| (b) before the entry into force of this Regulation, in accordance with Article 66. |
Amendment 55
Proposal for a regulation
Article 1 – paragraph 3
| Text proposed by the Commission | Amendment |
| 3. Articles 17 and 18 and Article 34(1) shall not apply to SEPs to the extent that they are implemented for use cases identified by the Commission in accordance with paragraph 4. | 3. Articles 17 and 18 and Article 34(1) shall not apply where there is sufficient evidence that SEP licensing negotiations on FRAND terms and conditions do not give rise to significant difficulties or inefficiencies affecting the functioning of the internal market as regards identified implementations of certain standards or parts thereof. Such implementations, standards and parts thereof shall be identified pursuant to the procedure set out in Article 65b. |
Amendment 56
Proposal for a regulation
Article 1 – paragraph 4
| Text proposed by the Commission | Amendment |
| 4. Where there is sufficient evidence that, as regards identified use cases of certain standards or parts thereof, SEP licensing negotiations on FRAND terms do not give rise to significant difficulties or inefficiencies affecting the functioning of the internal market, the Commission shall, after an appropriate consultation process, by means of a delegated act pursuant to Article 67, establish a list of such use cases, standards or parts thereof, for the purposes of paragraph 3. | 4. Without prejudice to paragraph 2, this Regulation shall also apply to patents in force in one or more Member States and that a SEP holder claims to be essential to a standard published by a standard development organisation before the entry into force of this Regulation, where the functioning of the internal market is severely distorted due to significant difficulties or inefficiencies in the licensing of SEPs for certain implementations, standards and parts thereof. Such implementations, standards and parts thereof shall be identified pursuant to the procedure set out in Article 65c. |
Amendment 57
Proposal for a regulation
Article 1 – paragraph 5
| Text proposed by the Commission | Amendment |
| 5. This Regulation shall apply to holders of SEP in force in one or more Member States. | 5. This Regulation shall not apply to SEPs that are subject to a royalty-free intellectual property policy, except when such SEPs are part of a portfolio of patents licensed for royalties. |
Amendment 58
Proposal for a regulation
Article 2 – paragraph 1 – point 1
| Text proposed by the Commission | Amendment |
| (1) ‘standard essential patent’ or ‘SEP’ means any patent that is essential to a standard; | (1) ‘standard essential patent’ or ‘SEP’ means any patent that a SEP holder claims to be is essential to a standard; |
Amendment 59
Proposal for a regulation
Article 2 – paragraph 1 – point 3
| Text proposed by the Commission | Amendment |
| (3) ‘standard’ means a technical specification, adopted by a standard development organisation, for repeated or continuous application, with which compliance is not compulsory; | (3) ‘standard’ means a technical specification, adopted by a standard development organisation, for repeated or continuous application; |
Amendment 60
Proposal for a regulation
Article 2 – paragraph 1 – point 5 a (new)
| Text proposed by the Commission | Amendment |
| (5a) ‘implementation’ means a specific scenario where a particular standardised technology or method is applied to fulfil a given purpose or function of a product, process, service or system, irrespective of the level in the value chain; |
Amendment 61
Proposal for a regulation
Article 2 – paragraph 1 – point 6
| Text proposed by the Commission | Amendment |
| (6) ‘SEP holder’ means an owner of a SEP or a person holding an exclusive licence for a SEP in one of more Member States; | (6) ‘SEP holder’ means an owner of a SEP or a person holding an exclusive licence for a SEP in one or more Member States; |
Amendment 62
Proposal for a regulation
Article 2 – paragraph 1 – point 7
| Text proposed by the Commission | Amendment |
| (7) ‘implementer’ means a natural or legal person that implements, or intends to implement, a standard in a product, process, service or system; | (7) ‘implementer’ means a natural or legal person that implements, or intends to implement, a standard in a product, process, service or system on the Union market; |
Amendment 63
Proposal for a regulation
Article 2 – paragraph 1 – point 10
| Text proposed by the Commission | Amendment |
| (10) ‘aggregate royalty’ means the maximum amount of royalty for all patents essential to a standard; | (10) ‘aggregate royalty’ means the total amount of money paid or required to be paid to license all patents essential to a standard; |
Amendment 64
Proposal for a regulation
Article 2 – paragraph 1 – point 10 a (new)
| Text proposed by the Commission | Amendment |
| (10a) ‘royalty-free’ means available without payment of a royalty or without an agreement for any other consideration, whether monetary or non-monetary; |
Amendment 65
Proposal for a regulation
Article 2 – paragraph 1 – point 11
| Text proposed by the Commission | Amendment |
| (11) ‘patent pool’ means an entity created by an agreement between two or more SEP holders to license one or more of their patents to one another or to third parties; | (11) ‘patent pool’ means an entity, created by an agreement between two or more SEP holders or a consortium in which multiple SEP holders agree to license one or more of their SEPs to each other or to third parties; |
Amendment 66
Proposal for a regulation
Article 2 – paragraph 1 – point 13
| Text proposed by the Commission | Amendment |
| (13) ‘claim chart’ means a presentation of correspondence between the elements (features) of one patent claim and at least one requirement of a standard or recommendation of a standard; | (13) ‘claim chart’ means a document identifying correspondence between the elements (features) of one patent claim and at least one requirement of a standard or recommendation of a standard; |
Amendment 67
Proposal for a regulation
Article 2 – paragraph 1 – point 16
| Text proposed by the Commission | Amendment |
| (16) ‘patent family’ means a collection of patent documents that cover the same invention and whose members have the same priorities; | (16) ‘patent family’ means a collection of patent applications having at least one priority in common, including the priority documents themselves; |
Amendment 68
Proposal for a regulation
Article 2 – paragraph 1 – point 17 a (new)
| Text proposed by the Commission | Amendment |
| (17a) ‘conciliator’ means any person that has been appointed to mediate among parties in establishing an aggregate royalty in accordance with Article 17, to serve on a panel that provides an opinion on an aggregate royalty in accordance with Article 18 and to serve in the FRAND determination in accordance with Title VI, who is independent and impartial and does not have any direct or indirect conflict of interest; |
Amendment 69
Proposal for a regulation
Article 2 – paragraph 1 – point 17 b (new)
| Text proposed by the Commission | Amendment |
| (17b) ‘evaluator’ means any person that has been appointed to conduct essentiality checks in accordance with Title V, who is independent and impartial, and does not have any direct or indirect conflict of interest; |
Amendment 70
Proposal for a regulation
Article 2 – paragraph 1 – point 17 c (new)
| Text proposed by the Commission | Amendment |
| (17c) ‘peer evaluator’ means any person that has been appointed to conduct a peer evaluation, who is independent and impartial, and does not have any direct or indirect conflict of interest; |
Amendment 71
Proposal for a regulation
Article 2 – paragraph 1 – point 18 a (new)
| Text proposed by the Commission | Amendment |
| (18a) ‘patent assertion entity’ means an entity that primarily derives its revenue from the enforcement or licensing of patents, including any damages or monetary awards from the assertion of such patents, and that does not engage in the production, manufacture, sale or distribution of products or services utilising the patented inventions or in the research and development of such inventions, that is not an educational or research institution or technology transfer organisation facilitating the commercialisation of technological innovations generated by them, and that is not an individual inventor asserting patents originally granted to that inventor or patents that cover technologies originally developed by that inventor. |
Amendment 72
Proposal for a regulation
Article 3 – paragraph 2 – point a
| Text proposed by the Commission | Amendment |
| (a) set up and maintain an electronic register and an electronic database for SEPs; | (a) set up and maintain an electronic register and an electronic database for SEPs in accordance with Articles 4 and 5; |
Amendment 73
Proposal for a regulation
Article 3 – paragraph 2 – point b
| Text proposed by the Commission | Amendment |
| (b) set up and manage rosters of evaluators and conciliators; | (b) set up and manage rosters of evaluators and conciliators in accordance with Article 27; |
Amendment 74
Proposal for a regulation
Article 3 – paragraph 2 – point c
| Text proposed by the Commission | Amendment |
| (c) set up and administer a system for assessment of the essentiality of SEPs; | (c) set up and administer a system for assessment of the essentiality of SEPs in accordance with Articles 28 to 33; |
Amendment 75
Proposal for a regulation
Article 3 – paragraph 2 – point d
| Text proposed by the Commission | Amendment |
| (d) set up and administer the process for the FRAND determination; | (d) set up and administer the process for the FRAND determination in accordance with Articles 34 to 58; |
Amendment 76
Proposal for a regulation
Article 3 – paragraph 2 – point f
| Text proposed by the Commission | Amendment |
| (f) administer a process for aggregate royalty determination; | (f) administer a process for facilitating agreements on and the determination of an aggregate royalty in accordance with Articles 17 and 18; |
Amendment 77
Proposal for a regulation
Article 3 – paragraph 2 – point g – point i
| Text proposed by the Commission | Amendment |
| (i) publishing the results and reasoned opinions of the essentiality checks and non-confidential reports of the FRAND determinations; | (i) publishing the results and reasoned opinions of the essentiality checks and non-confidential opinions of the FRAND determinations in accordance with Article 33(1) and Article 57(3); |
Amendment 78
Proposal for a regulation
Article 3 – paragraph 2 – point g – point ii
| Text proposed by the Commission | Amendment |
| (ii) enabling access to case-law (including alternative dispute resolution) on SEPs, including from third country jurisdictions; | (ii) enabling access to case-law (including alternative dispute resolution) on SEPs, including from third country jurisdictions in accordance with Article 13(3); |
Amendment 79
Proposal for a regulation
Article 3 – paragraph 2 – point g – point iii
| Text proposed by the Commission | Amendment |
| (iii) compiling non-confidential information on FRAND determination methodologies and FRAND royalties; | (iii) compiling non-confidential information on FRAND determination methodologies and FRAND royalties in accordance with Article 13(4) and (5); |
Amendment 80
Proposal for a regulation
Article 3 – paragraph 2 – point g – point iv
| Text proposed by the Commission | Amendment |
| (iv) enabling access to SEP-related rules of third countries; | (iv) enabling access to SEP-related rules of third countries in accordance with Article 12; |
Amendment 81
Proposal for a regulation
Article 3 – paragraph 2 – point h
| Text proposed by the Commission | Amendment |
| (h) provide training, support and general advice on SEPs to SMEs; | (h) set up and maintain a SEP Licensing Assistance Hub for SMEs and start-ups and provide training, support and general advice on SEPs to SMEs and start-ups in accordance with Article 61; |
Amendment 82
Proposal for a regulation
Article 3 – paragraph 2 – point j
| Text proposed by the Commission | Amendment |
| (j) raise awareness about SEP licensing, including SEP licensing in the value chain. | (j) establish a dedicated working group on conditions for licensing SEPs in the value chain and raise awareness about SEP licensing. |
Amendment 83
Proposal for a regulation
Article 4 – paragraph 1
| Text proposed by the Commission | Amendment |
| 1. A Union register for SEPs ('the register') is established. | 1. A Union register for SEPs ('the register') shall be set up and maintained in an electronic format by the competence centre. |
Amendment 84
Proposal for a regulation
Article 4 – paragraph 2
| Text proposed by the Commission | Amendment |
| 2. The register shall be maintained in electronic format by the competence centre. | deleted |
Amendment 85
Proposal for a regulation
Article 4 – paragraph 3 – point b
| Text proposed by the Commission | Amendment |
| (b) registered SEPs identification, including the country of registration and patent number; | (b) identification of registered SEPs, including the country of registration and patent number; |
Amendment 86
Proposal for a regulation
Article 4 – paragraph 3 – point c
| Text proposed by the Commission | Amendment |
| (c) the standard version, the technical specification and the specific sections of the technical specification for which the patent is considered essential; | (c) the standard version, the technical specification and the sections of the technical specification for which the patent is considered essential; |
Amendment 87
Proposal for a regulation
Article 4 – paragraph 3 – point f
| Text proposed by the Commission | Amendment |
| (f) if the SEP holder is part of a group of companies, the name, address and contact details of the parent company; | (f) if the SEP holder is an affiliate, subsidiary or part of one or more companies, the name, address and contact details of the parent company; |
Amendment 88
Proposal for a regulation
Article 4 – paragraph 3 – point h
| Text proposed by the Commission | Amendment |
| (h) the existence of any public standard terms and conditions, including SEP holder’s royalty and discount policies; | (h) the existence of any publicly available standard terms and conditions, including SEP holder’s royalty, royalty-free and discount policies; |
Amendment 89
Proposal for a regulation
Article 4 – paragraph 3 – point i
| Text proposed by the Commission | Amendment |
| (i) the existence of any public standard terms and conditions for SEP licensing to SMEs; | (i) the existence of any publicly available standard terms and conditions for SEP licensing to SMEs and start-ups; |
Amendment 90
Proposal for a regulation
Article 4 – paragraph 3 – point j
| Text proposed by the Commission | Amendment |
| (j) availability for licensing through patent pools, where applicable; | (j) availability for licensing through patent pools and the name of the respective patent pool, where applicable; |
Amendment 91
Proposal for a regulation
Article 4 – paragraph 4 – point c
| Text proposed by the Commission | Amendment |
| (c) information on whether an essentiality check or peer evaluation have been performed and reference to the result; | (c) any information on whether an essentiality check or peer evaluation have been performed and, unless not possible due to contractual limits agreed upon by the parties, also a reference to the outcome of the essentiality check; |
Amendment 92
Proposal for a regulation
Article 4 – paragraph 4 – point d
| Text proposed by the Commission | Amendment |
| (d) information on whether the SEP is expired or invalidated by a final judgment of a competent court of a Member State; | (d) information on whether the SEP is expired, invalidated or deemed unenforceable by a final judgment of a competent court of a Member State; |
Amendment 93
Proposal for a regulation
Article 4 – paragraph 4 – point f
| Text proposed by the Commission | Amendment |
| (f) date of publication of information pursuant to Article 19(1) in conjunction with Article 14(7), Article 15(4) and Article 18(11); | (f) date of publication of information pursuant to Article 19(1); |
Amendment 94
Proposal for a regulation
Article 4 – paragraph 4 a (new)
| Text proposed by the Commission | Amendment |
| 4a. Prior to registering their patents, SEP holders may voluntarily submit their SEPs for essentiality checks to the competence centre. |
Amendment 95
Proposal for a regulation
Article 5 – paragraph 1
| Text proposed by the Commission | Amendment |
| 1. The competence centre shall establish and maintain an electronic database for SEPs. | 1. The competence centre shall set up and maintain an electronic database for SEPs. |
Amendment 96
Proposal for a regulation
Article 5 – paragraph 2 – point b
| Text proposed by the Commission | Amendment |
| (b) public standard terms and conditions, including SEP holder’s royalty and discount policies pursuant to Article 7, first paragraph, point (b), if available; | (b) publicly available standard terms and conditions, including SEP holder’s royalty, royalty-free and discount policies pursuant to Article 7, first paragraph, point (b), if available; |
Amendment 97
Proposal for a regulation
Article 5 – paragraph 2 – point c
| Text proposed by the Commission | Amendment |
| (c) public standard terms and conditions for SEP licensing to SMEs pursuant to Article 62(1), if available; | (c) publicly available standard terms and conditions for SEP licensing to SMEs, and start-ups pursuant to Article 62(1), including royalty-free access, if available; |
Amendment 98
Proposal for a regulation
Article 5 – paragraph 2 – point d
| Text proposed by the Commission | Amendment |
| (d) information regarding known products, processes, services or systems and implementations pursuant to Article 7, first paragraph, point (b); | (d) information regarding known products, processes, services or systems and implementations and, where available, any known market data pursuant to Article 7, first paragraph, point (a); |
Amendment 99
Proposal for a regulation
Article 5 – paragraph 3
| Text proposed by the Commission | Amendment |
| 3. Access to the information pursuant to paragraph (2), points (f), (h), (i), (j) and (k) may be subject to the payment of a fee. | 3. Access to the information pursuant to paragraph (2), points (f), (h), (i), (j) and (k) shall be available to any third party subject to registration with the competence centre and may be subject to the payment of a reasonable fee, as set out in Article 63. |
Amendment 100
Proposal for a regulation
Article 5 – paragraph 4
| Text proposed by the Commission | Amendment |
| 4. However, public authorities, including courts, shall have full access to the information in the database referred to in paragraph (2) free of charge subject to registration with the competence centre. | 4. However, public authorities, including courts, shall have full access to the information in the database referred to in paragraph (2) free of charge subject to registration with the competence centre. Academic institutions may also request access to the information free of charge solely for the purpose of conducting academic tasks. |
Amendment 101
Proposal for a regulation
Article 6 – paragraph 1
| Text proposed by the Commission | Amendment |
| 1. When a party requests that data and documents of the database be kept confidential, that party shall provide a non-confidential version of the information submitted in confidence in sufficient detail to permit a reasonable understanding of the substance of the information submitted in confidence. The competence centre may disclose that non-confidential version. | 1. When a party requests that data and documents of the database be kept confidential, that party shall provide a reasoned statement justifying this confidentiality and, where reasonably possible, a non-confidential version of the information submitted in confidence in sufficient detail to permit a reasonable understanding of the substance of the information submitted in confidence. The competence centre may disclose that non-confidential version. |
Amendment 102
Proposal for a regulation
Article 6 – paragraph 5
| Text proposed by the Commission | Amendment |
| 5. Upon request, the competence centre shall issue registration certificates or certified copies of the data and documents in the register or the database. The registration certificates and certified copies may be subject to the payment of a fee. | 5. Upon request, the competence centre shall issue registration certificates or certified copies of the data and documents in the register or the database. The registration certificates and certified copies may be subject to the payment of a reasonable fee. |
Amendment 103
Proposal for a regulation
Article 7 – paragraph 1 – point a
| Text proposed by the Commission | Amendment |
| (a) information as regards the products, processes, services or systems in which the subject-matter of the SEP may be incorporated or to which it is intended to be applied, for all existing or potential implementations of a standard, to the extent such information is known to the SEP holder. | (a) information as regards the products, processes, services or systems in which the subject-matter of the SEP may be incorporated or to which it is intended to be applied, for all existing or potential implementations of a standard and, where available, any market data, to the extent such information is known to the SEP holder. |
Amendment 104
Proposal for a regulation
Article 7 – paragraph 1 – point b
| Text proposed by the Commission | Amendment |
| (b) where available, its standard terms and conditions for SEP licensing, including its royalty and discount policies, within 7 months from the opening of the registration for the relevant standard and implementation by the competence centre. | (b) where available, its standard terms and conditions for SEP licensing, including its royalty, royalty-free and discount policies, within 7 months from the opening of the registration for the relevant standard and implementation by the competence centre. |
Amendment 105
Proposal for a regulation
Article 8 – title
| Text proposed by the Commission | Amendment |
| Information pertaining to essentiality | Information on essentiality |
Amendment 106
Proposal for a regulation
Article 8 – paragraph 1 – point a
| Text proposed by the Commission | Amendment |
| (a) a final decision on essentiality for a registered SEP made by a competent court of a Member State within 6 months from the publication of such decision. | (a) a final decision on essentiality for a registered SEP made by a competent court of a Member State within 2 months after the decision has become final; |
Amendment 107
Proposal for a regulation
Article 8 – paragraph 1 – point b
| Text proposed by the Commission | Amendment |
| (b) any essentiality check prior to [OJ: please insert the date = 24 months from entry into force of this regulation] by an independent evaluator in the context of a pool, identifying the SEP registration number, the identity of the patent pool and its administrator, and the evaluator. | (b) any other essentiality check by an independent evaluator in the context of, for example, a patent pool, identifying the SEP registration number, the identity of the patent pool and its administrator, and the evaluator. |
Amendment 108
Proposal for a regulation
Article 9 – paragraph 1 – introductory part
| Text proposed by the Commission | Amendment |
| 1. Patent pools shall publish on their websites at least the following information and inform the competence centre thereof: | 1. Patent pools shall publish on their websites at least the following accurate and updated information and inform the competence centre thereof: |
Amendment 109
Proposal for a regulation
Article 9 – paragraph 1 – point g
| Text proposed by the Commission | Amendment |
| (g) list of products, services and processes that may be licensed through the patent pool or the entity; | (g) list of products, services and processes that may be licensed through the patent pool; |
Amendment 110
Proposal for a regulation
Article 9 – paragraph 1 – point h
| Text proposed by the Commission | Amendment |
| (h) royalties and discount policy per product category; | (h) royalties, royalty-free and discount policies per implementation including information on royalty calculation per SEP owner in the pool and aggregate royalty rate, if applicable; |
Amendment 111
Proposal for a regulation
Article 9 – paragraph 1 – point i
| Text proposed by the Commission | Amendment |
| (i) standard licence agreement per product category; | (i) standard licence agreement per implementation; |
Amendment 112
Proposal for a regulation
Article 9 – paragraph 1 – point j
| Text proposed by the Commission | Amendment |
| (j) list of licensors in each product category; | (j) list of licensors in each implementation; |
Amendment 113
Proposal for a regulation
Article 9 – paragraph 1 – point k
| Text proposed by the Commission | Amendment |
| (k) list of licensees for each product category. | (k) list of licensees for each implementation. |
Amendment 114
Proposal for a regulation
Article 9 – paragraph 1 a (new)
| Text proposed by the Commission | Amendment |
| 1a. The competence centre shall verify the information submitted by patent pools in accordance with paragraph 1 on a regular basis and at least once a year, based on a methodology it develops for this purpose, ensuring that the verification process is thorough, transparent and consistent. That methodology shall be made available to patent pools and to other stakeholders for the sake of transparency. |
Amendment 115
Proposal for a regulation
Article 9 – paragraph 1 b (new)
| Text proposed by the Commission | Amendment |
| 1b. The competence centre shall prepare a report detailing the outcomes of its verification, including with regard to patent pools’ compliance with paragraph 1, any discrepancies or missing information identified, and the corrective actions taken or recommended. That report shall be submitted to the Commission within one month following the completion of each verification cycle. |
Amendment 116
Proposal for a regulation
Article 10 – paragraph 1 – introductory part
| Text proposed by the Commission | Amendment |
| 1. Competent courts of Member States shall notify the competence centre within 6 months from the adoption of a judgment concerning SEPs on: | 1. Competent courts of Member States shall notify the competence centre within 2 months after the decision concerning SEPs has become final on: |
Amendment 117
Proposal for a regulation
Article 10 – paragraph 1 – point b
| Text proposed by the Commission | Amendment |
| (b) infringement proceedings; | (b) infringements; |
Amendment 118
Proposal for a regulation
Article 11 – paragraph 1
| Text proposed by the Commission | Amendment |
| 1. Persons involved in alternative dispute resolution proceedings concerning SEPs in force in a Member State shall disclose to the competence centre within 6 months from the termination of the procedure the standards and the implementations concerned, the methodology used for the calculation of FRAND terms and conditions, information on the name of the parties, and on specific licensing rates determined. | 1. Persons involved in alternative dispute resolution proceedings concerning SEPs in force in a Member State shall disclose to the competence centre within 4 months from the termination of the procedure the standards and the implementations concerned, the methodology used for the calculation of FRAND terms and conditions, information on the name of the parties, and on specific licensing rates determined. |
Amendment 119
Proposal for a regulation
Article 12 – paragraph 1
| Text proposed by the Commission | Amendment |
| 1. The competence centre shall collect and publish in the database information on any SEP related rules in any third country. | 1. The competence centre shall collect, duly verify and promptly publish information on any SEP related rules in any third country in the database. The competence centre may also collect information on compliance with this Regulation in third countries as well as monitor its impact on implementers. |
Amendment 120
Proposal for a regulation
Article 12 – paragraph 2
| Text proposed by the Commission | Amendment |
| 2. Any person may provide the competence centre with such information as well as information on updates, corrections and public consultations. The competence centre shall publish that information in the database. | 2. Any person may provide the competence centre with such information as well as information on updates, corrections and public consultations. The competence centre shall publish that information in the database after verifying its accuracy. |
Amendment 121
Proposal for a regulation
Article 12 – paragraph 2 a (new)
| Text proposed by the Commission | Amendment |
| 2a. In order to facilitate effective implementation of this Regulation, the competence centre may cooperate, engage and exchange information with, amongst others, authorities of third countries and international organisations dealing with SEPs, in particular as regards the information on SEP related rules in third countries or the prevention of parallel proceedings. |
Amendment 122
Proposal for a regulation
Article 13 – paragraph 1
| Text proposed by the Commission | Amendment |
| 1. The competence centre shall store in the database all the data provided by stakeholders, as well as opinions and reports of evaluators and conciliators. | 1. The competence centre shall store in the database all the data provided by stakeholders, as well as reasoned opinions and reports of evaluators and conciliators. |
Amendment 123
Proposal for a regulation
Article 13 – paragraph 2 – point c a (new)
| Text proposed by the Commission | Amendment |
| (ca) making available to interested persons SEPs, standards and implementations, with the use of easily accessible research tools and reasonably understandable search results; |
Amendment 124
Proposal for a regulation
Article 13 – paragraph 2 – point d a (new)
| Text proposed by the Commission | Amendment |
| (da) facilitating assessments of SEP licensing practices and their impact on the internal market, innovation and access to standardised technology. |
Amendment 125
Proposal for a regulation
Article 14 – paragraph 1 – introductory part
| Text proposed by the Commission | Amendment |
| 1. Holders of a patent in force in one or more Member States which is essential to a standard for which FRAND commitments have been made shall notify to the competence centre, where possible through the standard development organisation or through a joint notification, the following information: | 1. Holders of patents in force in one or more Member States which are claimed to be essential to a standard for which FRAND commitments have or have not been made shall notify to the competence centre, where possible through the standard development organisation or through a joint notification, the following information: |
Amendment 126
Proposal for a regulation
Article 14 – paragraph 3
| Text proposed by the Commission | Amendment |
| 3. In the absence of the notification under paragraph (1), any holder of a SEP in force in one or more Member State shall notify individually, no later than 90 days from the publication of the latest technical specification, to the competence centre the information referred to in paragraph (1). | 3. In the absence of the notification under paragraph (1), any holder of a SEP in force in one or more Member States shall notify individually, no later than 90 days from the publication of the latest technical specification, to the competence centre the information referred to in paragraph (1). |
Amendment 127
Proposal for a regulation
Article 14 – paragraph 5
| Text proposed by the Commission | Amendment |
| 5. The competence centre shall also notify the relevant standard development organisation of the publication. In case of notification pursuant to paragraphs (3) and (4), it shall also notify, where possible, known SEP holders individually or request confirmation from the standard development organisation that it has duly notified the SEP holders. | 5. The competence centre shall also notify the relevant standard development organisation of the notification. In case of notification pursuant to paragraphs (3) and (4), it shall also notify, where possible, known SEP holders individually or request confirmation from the standard development organisation that it has duly notified the SEP holders. |
Amendment 128
Proposal for a regulation
Article 14 – paragraph 6
| Text proposed by the Commission | Amendment |
| 6. The competence centre shall publish on the EUIPO website the notifications made pursuant to paragraphs (1), (3) and (4) for comments by stakeholders. Stakeholders may submit their comments to the competence centre within 30 days from the publication of the list. | 6. The competence centre shall publish on the EUIPO website the notifications made pursuant to paragraphs (1), (3), (4) and (4a) for comments by stakeholders. Stakeholders may submit their comments to the competence centre within 30 days from the publication of the list. |
Amendment 129
Proposal for a regulation
Article 15 – paragraph 1
| Text proposed by the Commission | Amendment |
| 1. Holders of SEPs in force in one or more Member States for which FRAND commitments have been made may jointly notify the competence centre the aggregate royalty for the SEPs covering a standard. | 1. Holders of SEPs in force in one or more Member States for which FRAND commitments have or have not been made may jointly notify the competence centre the aggregate royalty for all SEPs covering a standard. |
Amendment 130
Proposal for a regulation
Article 17 – title
| Text proposed by the Commission | Amendment |
| Process for facilitating agreements on aggregate royalty determinations | Process for facilitating agreements between SEP holders on aggregate royalty |
Amendment 131
Proposal for a regulation
Article 17 – paragraph 3 – point e
| Text proposed by the Commission | Amendment |
| (e) the estimated percentage of SEPs they own individually and collectively from all potential SEPs claimed for the standard. | (e) the estimated percentage of SEPs they own individually and collectively from all SEPs claimed for the standard. |
Amendment 132
Proposal for a regulation
Article 17 – paragraph 4
| Text proposed by the Commission | Amendment |
| 4. The competence centre shall notify the SEP holders referred to in paragraph (3), point (d) and request them to express their interest in participating in the process and to provide their estimated percentage of SEPs from all SEPs for the standard. | 4. The competence centre shall publish the request and invite other SEP holders to express their interest in participating in the process and to provide their estimated percentage of SEPs from all SEPs for the standard. |
Amendment 133
Proposal for a regulation
Article 17 – paragraph 7
| Text proposed by the Commission | Amendment |
| 7. Where the SEP holders fail to make a joint notification within 6 months from the appointment of the conciliator, the conciliator shall terminate the process. | 7. Where the SEP holders fail to make an agreement regarding the joint notification submission of an aggregate royalty within 6 months from the appointment of the conciliator, the conciliator shall terminate the process. |
Amendment 134
Proposal for a regulation
Article 17 – paragraph 8
| Text proposed by the Commission | Amendment |
| 8. If the contributors agree on a joint notification, the procedure set out in Article 15(1), (2) and (4) shall apply. | 8. If the SEP holders agree on a joint notification, the procedure set out in Article 15(1), (2) and (4) shall apply. |
Amendment 135
Proposal for a regulation
Article 18 – paragraph 1
| Text proposed by the Commission | Amendment |
| 1. A SEP holder or an implementer may request the competence centre for a non-binding expert opinion on a global aggregate royalty. | 1. A SEP holder or an implementer may request the competence centre for a non-binding expert opinion on an aggregate royalty. An implementer may make this request, even if an agreement amongst SEP holders has already been reached, including through the procedure laid down in Articles 15 to 17. |
Amendment 136
Proposal for a regulation
Article 18 – paragraph 4
| Text proposed by the Commission | Amendment |
| 4. The competence centre shall notify the relevant standard development organisation and all known stakeholders of the request. It shall publish the request on EUIPO's website and invite stakeholders to express interest in participating in the process within 30 days from the day when the request was published. | 4. The competence centre shall notify the relevant standard development organisation and all relevant stakeholders of the request. It shall publish the request on EUIPO's website and invite stakeholders to express interest in participating in the process within 30 days from the day when the request was published. |
Amendment 137
Proposal for a regulation
Article 18 – paragraph 5
| Text proposed by the Commission | Amendment |
| 5. Any stakeholder may request to participate in the process after explaining the basis of its interest. SEP holders shall provide their estimated percentage of those SEPs of all SEPs for a standard. Implementers shall provide information on any relevant implementations of the standard, including any relevant market share in the Union. | 5. Any stakeholder may request to participate in the process after explaining the basis of its interest. SEP holders shall provide their estimated percentage of those SEPs of all SEPs for a standard. Implementers and other stakeholders shall provide information on any relevant existing or potential implementations of the standard, including any relevant market share in the Union. |
Amendment 138
Proposal for a regulation
Article 18 – paragraph 6
| Text proposed by the Commission | Amendment |
| 6. If the requests for participation include SEP holders representing collectively at least an estimated 20% of all SEPs for the standard, and implementers holding collectively at least 10% relevant market share in the Union or at least 10 SMEs, the competence centre shall appoint a panel of three conciliators selected from the roster of conciliators with the appropriate background from the relevant field of technology. | 6. If the requests for participation include SEP holders representing collectively at least an estimated 20% of all SEPs for the standard, or implementers holding collectively at least 10% relevant market share in the Union or at least 10 SMEs or start-ups, the competence centre shall appoint a panel of three conciliators selected from the roster of conciliators having the appropriate experience in the relevant field of technology. |
Amendment 139
Proposal for a regulation
Article 18 – paragraph 8 – introductory part
| Text proposed by the Commission | Amendment |
| 8. Following the appointment, the panel shall request the participating SEP holders to, within one month: | 8. Within one month following the appointment, the panel shall request the participating SEP holders to: |
Amendment 140
Proposal for a regulation
Article 18 – paragraph 8 – point b
| Text proposed by the Commission | Amendment |
| (b) submit justification on the impossibility to propose an aggregate royalty due to technological, economic, or other considerations. | (b) submit justification on the impossibility to propose an aggregate royalty due to technological, economic, or other considerations and |
Amendment 141
Proposal for a regulation
Article 18 – paragraph 8 – point b a (new)
| Text proposed by the Commission | Amendment |
| (ba) provide evidence or observations to assist the panel in deciding on aggregate royalty. |
Amendment 142
Proposal for a regulation
Article 18 – paragraph 8 a (new)
| Text proposed by the Commission | Amendment |
| 8a. The panel shall permit participants to submit responses to the submissions provided for in paragraph 8 and reactions to those responses. |
Amendment 143
Proposal for a regulation
Article 18 – paragraph 9 – introductory part
| Text proposed by the Commission | Amendment |
| 9. The panel shall duly consider the submissions provided for in paragraph 8 and decide: | 9. The panel shall duly consider the submissions and responses provided for in paragraphs 8 and 8a and decide: |
Amendment 144
Proposal for a regulation
Article 18 – paragraph 9 – point a
| Text proposed by the Commission | Amendment |
| to suspend the procedure for the expert opinion on aggregate royalty for an initial period of no longer than 6 months, which can be further extended on the basis of a duly justified request by one of the participating SEP holders, or | (a) to grant a suspension of the procedure for an initial period of no longer than 6 months, which can be further extended for another period of 3 months on the basis of a duly justified request by one of the participating SEP holders, or |
Amendment 145
Proposal for a regulation
Article 18 – paragraph 10
| Text proposed by the Commission | Amendment |
| 10. The panel shall provide the expert opinion within 8 months of the end of the suspension period pursuant to paragraph 8(a) or of the decision referred to in paragraph 8(b). The opinion shall be supported by at least two of the three conciliators. | 10. The panel shall provide the expert opinion within 8 months of the end of the suspension period pursuant to paragraph 9(a) or of the decision referred to in paragraph 9(b). The opinion shall be supported by at least two of the three conciliators. |
Amendment 146
Proposal for a regulation
Article 18 – paragraph 11
| Text proposed by the Commission | Amendment |
| 11. The expert opinion shall include a summary of the information provided in the request, the information referred to in Article 15(2), the names of the conciliators, the procedure, the reasons for the opinion on the aggregate royalty and the underlying methodology. The reasons for any divergent views shall be specified in an annex to the expert opinion. | 11. The expert opinion shall include a summary of the information provided in the request, the information referred to in Article 15(2), the names of the conciliators, the procedure, the recommended aggregate royalty rate, the reasons for the opinion on the aggregate royalty and the underlying methodology. Any divergent views and the reasons underlying them shall be specified in an annex to the expert opinion. |
Amendment 147
Proposal for a regulation
Article 19 – paragraph 1 – introductory part
| Text proposed by the Commission | Amendment |
| 1. The competence centre shall create an entry in the register for a standard for which FRAND commitments have been made within 60 days from the earliest of the following events: | 1. The competence centre shall create an entry in the register for a standard or part thereof for which FRAND commitments have been made within 60 days from the earliest of the following events: |
Amendment 148
Proposal for a regulation
Article 20 – paragraph 5
| Text proposed by the Commission | Amendment |
| 5. A SEP holder shall update the information in the register and database to reflect relevant changes in relation to its registered SEP by notifying the competence centre within 6 months from the change occurring. | 5. A SEP holder shall update the information in the register, except for the information provided in accordance with Article 4(3), point (c), and database to reflect relevant changes in relation to its registered SEP by notifying the competence centre within 6 months from the change occurring. |
Amendment 149
Proposal for a regulation
Article 20 – paragraph 6
| Text proposed by the Commission | Amendment |
| 6. The request for registration will only be accepted following the payment of the registration fee by the SEP holder. The Commission shall determine the registration fee in the implementing act issued based on Art. 63(5). The registration fee shall include, in case of medium and large enterprises, the expected costs and fees of the essentiality check for SEPs selected pursuant to Article 29(1). | 6. The request for registration will only be accepted following the payment of the registration fee by the SEP holder. The Commission shall determine the registration fee in the implementing act issued based on Art. 63(5). The registration fee shall include, in case of medium and large enterprises, the expected costs pursuant to Article 29(1). |
Amendment 150
Proposal for a regulation
Article 22 – paragraph 1
| Text proposed by the Commission | Amendment |
| 1. A sample of SEP registrations shall be checked annually for completeness and correctness. | 1. The EUIPO shall annually check a sample of SEP registrations in order to verify their completeness and correctness. |
Amendment 151
Proposal for a regulation
Article 22 – paragraph 3
| Text proposed by the Commission | Amendment |
| 3. Where the registration does not contain the information in accordance with Articles 4 and 5 or contains incomplete or inaccurate information, the competence centre shall request the SEP holder to provide the complete and accurate information within the set time limit of no less than 2 months. | 3. Where the registration does not contain the information in accordance with Articles 4 and 5 or contains incomplete or inaccurate information, the competence centre shall request the SEP holder to provide the complete and accurate information within the set time limit of no less than 3 months. |
Amendment 152
Proposal for a regulation
Article 22 – paragraph 4
| Text proposed by the Commission | Amendment |
| 4. If the SEP holder fails to provide the correct and complete information, the registration shall be suspended from the register, until such time as the incompleteness or inaccuracy is remedied. | 4. If the SEP holder fails to provide the correct and complete information, the competence centre shall notify the SEP holder about its failure to provide the correct and complete information and that, following a grace period of 1 month during which the SEP holder could still provide the required information, its registration shall be suspended from the register, until such time as the incompleteness or inaccuracy is remedied. |
Amendment 153
Proposal for a regulation
Article 23 – paragraph 3
| Text proposed by the Commission | Amendment |
| 3. The competence centre shall notify the request to the SEP holder and invite the SEP holder to correct the entry in the register or the information submitted for the database, where relevant within a time limit no less than 2 months. | 3. The competence centre shall notify the request made in accordance with paragraph 2 to the SEP holder and invite the SEP holder to request a correction of the entry in the register or the information submitted for the database, where relevant within a time limit no less than 3 months. |
Amendment 154
Proposal for a regulation
Article 23 – paragraph 4 – introductory part
| Text proposed by the Commission | Amendment |
| 4. The competence centre shall notify the SEP holder and invite the SEP holder to correct the entry in the register or the information submitted for the database, where relevant within a time limit no less than 2 months, when the competence centre is informed by a competent court of a Member State pursuant to Article 10(1) or a patent office or any third party of: | 4. The competence centre shall notify the SEP holder and invite the SEP holder to request a correction of the entry in the register or the information submitted for the database, where relevant within a time limit no less than 3 months, when the competence centre is informed by a competent court of a Member State pursuant to Article 10(1) or a patent office or any third party of: |
Amendment 155
Proposal for a regulation
Article 23 – paragraph 5
| Text proposed by the Commission | Amendment |
| 5. If the SEP holder fails to correct the entry in the register or the information submitted for the database within the given time limit, the registration shall be suspended from the register, until such time as the incompleteness or inaccuracy is remedied. | 5. If the SEP holder fails to correct the entry in the register or the information submitted for the database within the given time limit, the competence centre shall notify the SEP holder about its failure to provide the correct and complete information and that, following a grace period of 1 month during which the SEP holder could still provide the required information, the registration shall be suspended from the register, until such time as the incompleteness or inaccuracy is remedied. |
Amendment 156
Proposal for a regulation
Article 23 – paragraph 8
| Text proposed by the Commission | Amendment |
| 8. The competence centre may correct any linguistic errors or errors of transcription and manifest oversights or technical errors attributable to it in the register and in the database of its own motion. | 8. The competence centre shall correct any linguistic errors or errors of transcription and manifest oversights or technical errors attributable to it in the register and in the database of its own motion. |
Amendment 157
Proposal for a regulation
Article 24 – paragraph 1
| Text proposed by the Commission | Amendment |
| 1. A SEP that is not registered within the time-limit set out in Article 20(3) may not be enforced in relation to the implementation of the standard for which a registration is required in a competent court of a Member State, from the time-limit set out in Article 20(3) until its registration in the register. | deleted |
Amendment 158
Proposal for a regulation
Article 24 – paragraph 2
| Text proposed by the Commission | Amendment |
| 2. A SEP holder that has not registered its SEPs within the time-limit set out in Article 20(3) shall not be entitled to receive royalties or seek damages for infringement of such SEPs in relation to the implementation of the standard for which registration is required, from the time-limit set out in Article 20(3) until its registration in the register. | 2. A SEP holder that has not registered its SEPs within the time-limit set out in Article 20(3) shall not be entitled to bring a claim for infringement of such SEPs in relation to the implementation of the standard for which registration is required, from the time-limit set out in Article 20(3) until its registration in the register. |
Amendment 159
Proposal for a regulation
Article 24 – paragraph 3
| Text proposed by the Commission | Amendment |
| 3. Paragraphs (1) and (2) are without prejudice to provisions included in contracts setting a royalty for a broad portfolio of patents, present or future, stipulating that the invalidity, non-essentiality or unenforceability of a limited number thereof shall not affect the overall amount and enforceability of the royalty or other terms and conditions of the contract. | 3. Paragraph 1 is without prejudice to provisions included in contracts concluded and applied before the entry into force of this Regulation which set a royalty for patents that are or have been claimed to be essential to a standard. |
Amendment 160
Proposal for a regulation
Article 24 – paragraph 4
| Text proposed by the Commission | Amendment |
| 4. Paragraphs (1) and (2) apply also in case the registration of a SEP is suspended, during the suspension period pursuant to Article 22(4) or 23(5), except where the Boards of Appeal request the competence centre to correct its findings in accordance with Article 22(5) and 23(6). | 4. Paragraph 1 applies also in case the registration of a SEP is suspended, during the suspension period pursuant to Article 22(4) or 23(5), except where the Boards of Appeal request the competence centre to correct its findings in accordance with Article 22(5) and 23(6). |
Amendment 161
Proposal for a regulation
Article 26 – paragraph 5 – introductory part
| Text proposed by the Commission | Amendment |
| 5. By [OJ: please insert the date = 18 months from entry into force of this regulation], the Commission shall by means of an implementing act adopted in accordance with the examination procedure referred to in , lay down the practical and operational arrangements concerning: | 5. By … [OJ: please insert the date = 18 months from entry into force of this regulation], the Commission shall by means of an implementing act adopted in accordance with the examination procedure referred to in Article 68(2) , lay down the practical and operational arrangements concerning: |
Amendment 162
Proposal for a regulation
Article 26 – paragraph 5 – point a
| Text proposed by the Commission | Amendment |
| (a) the requirements for evaluators or conciliators, including a Code of Conduct; | (a) the requirements for evaluators or conciliators, including a Code of Conduct, including at least the criteria of Article 27(2a) of this Regulation; |
Amendment 163
Proposal for a regulation
Article 27 – paragraph 2
| Text proposed by the Commission | Amendment |
| 2. The competence centre shall establish a roster of suitable candidates for evaluators or conciliators. There may be different rosters of evaluators and conciliators depending on the technical area of their specialisation or expertise. | 2. The competence centre shall establish a roster of suitable candidates for evaluators or conciliators and make sure that: |
Amendment 164
Proposal for a regulation
Article 27 – paragraph 2 – point a (new)
| Text proposed by the Commission | Amendment |
| (a) there is no potential conflicts of interest, so that the chosen evaluators and conciliators are impartial and unbiased; |
Amendment 165
Proposal for a regulation
Article 27 – paragraph 2 – point b (new)
| Text proposed by the Commission | Amendment |
| (b) every evaluator and conciliator appointed to the roster has the necessary qualification, experience and skills to perform the required tasks effectively. In particular, they shall have the necessary qualifications, substantial experience in the patent industry and dispute resolution, a demonstrated understanding of FRAND terms and conditions or a solid technical background in relevant technology field. |
Amendment 166
Proposal for a regulation
Article 27 – paragraph 2 - subparagraph 1 a (new)
| Text proposed by the Commission | Amendment |
| Where the competence centre has not yet established roster of candidates evaluators or conciliators at the moment of the first registrations or FRAND determination, the competence centre shall invite ad hoc renowned experts who satisfy the requirements set out in the implementing act referred to in Article 26(5). | There shall be different rosters of evaluators and conciliators depending on the technical area of their specialisation or expertise. |
Amendment 167
Proposal for a regulation
Article 28 – paragraph 1
| Text proposed by the Commission | Amendment |
| 1. The competence centre shall administer a system of essentiality checks, ensuring that they are conducted in an objective and impartial manner and that confidentiality of the information obtained is safeguarded | 1. The competence centre shall administer a system of essentiality checks, ensuring that they are conducted in a transparent, objective and impartial manner and that confidentiality of the information obtained is safeguarded. |
Amendment 168
Proposal for a regulation
Article 29 – paragraph 1
| Text proposed by the Commission | Amendment |
| 1. The competence centre shall select annually a sample of registered SEPs from different patent families from each SEP holder and with regard to each specific standard in the register for essentiality checks. Registered SEPs of micro and small enterprises shall be excluded from the annual sampling process. The checks shall be conducted based on a methodology that ensures the establishment of a fair and statistically valid selection that can produce sufficiently accurate results about the essentiality rate in all registered SEPs of a SEP holder with regard to each specific standard in the register. By [OJ: please insert the date = 18 months from entry into force of this regulation] the Commission shall, by means of an implementing act, determine the detailed methodology. That implementing act shall be adopted in accordance with the examination procedure referred to in Article 68(2). | 1. The competence centre shall select annually a sample of registered SEPs from different patent families from each SEP holder and with regard to each specific standard in the register for essentiality checks. Registered SEPs of micro and small enterprises shall be excluded from the annual sampling process, unless they are a patent assertion entity or a subsidiary, affiliate, or owned or directly or indirectly controlled by another natural or legal person that does not qualify as an SME itself. The checks shall be conducted based on a methodology that ensures the establishment of a fair and statistically valid selection that can produce sufficiently accurate results about the essentiality rate in all registered SEPs of a SEP holder with regard to each specific standard in the register. By [OJ: please insert the date = 18 months from entry into force of this Regulation] the Commission shall, by means of an implementing act, determine the detailed methodology. That implementing act shall be adopted in accordance with the examination procedure referred to in Article 68(2). |
Amendment 169
Proposal for a regulation
Article 29 – paragraph 4
| Text proposed by the Commission | Amendment |
| 4. If a SEP selected for essentiality check was already the subject of a previous or ongoing essentiality check pursuant to This title or of an essentiality decision or check referred to in Article 8, no additional essentiality check shall be done. The result from the previous essentiality check or decision shall be used for the determination of the percentage of sampled per SEP holder and per specific registered standard that has passed successfully the essentiality check. | 4. If a SEP selected for essentiality check was already the subject of a previous or ongoing essentiality check pursuant to This title or of an essentiality decision or check referred to in Article 8, no additional essentiality check shall be done unless paragraph 4a applies. The result from the previous essentiality check or decision shall be used for the determination of the percentage of sampled per SEP holder and per specific registered standard that has passed successfully the essentiality check. |
Amendment 170
Proposal for a regulation
Article 29 – paragraph 4 a (new)
| Text proposed by the Commission | Amendment |
| 4a. If an evaluator has sufficient reason to believe that a prior essentiality check conducted under Article 8, point (b), might be inaccurate, the evaluator shall have the authority to review the result of that check. If, after the review, the evaluator concludes that the prior essentiality check result was inaccurate, this evaluator shall conduct a new essentiality check for the specific SEP in question. |
Amendment 171
Proposal for a regulation
Article 30 – paragraph 1
| Text proposed by the Commission | Amendment |
| 1. Within 90 days following the publication of the list of registered SEPs selected for sampling, any stakeholder may submit to the competence centre written observations concerning the essentiality of the selected SEPs. | 1. Within 90 days following the publication of the list of registered SEPs selected for sampling, any stakeholder may submit to the competence centre written observations and evidence concerning the essentiality of the selected SEPs. |
Amendment 172
Proposal for a regulation
Article 30 – paragraph 3
| Text proposed by the Commission | Amendment |
| 3. The competence centre shall provide the observations and the responses by the SEP holder to the evaluator following the expiry of the set time limits. | 3. The competence centre shall provide the observations, evidence and the responses by the SEP holder to the evaluator following the expiry of the set time limits. |
Amendment 173
Proposal for a regulation
Article 31 – paragraph 4
| Text proposed by the Commission | Amendment |
| 4. The evaluator shall duly consider any information provided by the SEP holder. | 4. The evaluator shall duly consider any information provided by the SEP holder or by stakeholders in accordance with the procedure laid down in Article 30. |
Amendment 174
Proposal for a regulation
Article 32 – paragraph 3
| Text proposed by the Commission | Amendment |
| 3. The peer evaluator shall duly consider all the information submitted by the SEP holder, the reasons of the initial evaluator why the SEP may not be essential to the standard and any amended claim chart or additional observations provided by the SEP holder. | 3. The peer evaluator shall duly consider all the information submitted by the SEP holder or stakeholders which have provided observations or evidence in accordance with the procedure laid down in Article 30, the reasons of the initial evaluator why the SEP may not be essential to the standard and any amended claim chart or additional observations provided by the SEP holder. |
Amendment 175
Proposal for a regulation
Article 32 – paragraph 5
| Text proposed by the Commission | Amendment |
| 5. The peer evaluator shall duly consider the observations of the SEP holder and issue a final reasoned opinion to the competence centre within 3 months from its appointment. The final reasoned opinion shall include the name of the SEP holder, of the evaluator and of the peer evaluator, the SEP subject to the essentiality check, the relevant standard, a summary of the examination and peer evaluation procedure, the preliminary conclusion of the evaluator, the result of the peer evaluation and the reasons on which that result is based. | 5. The peer evaluator shall duly consider the observations of the SEP holder or the observations or evidence provided by other stakeholders in accordance with Article 30 and issue a final reasoned opinion to the competence centre within 3 months from its appointment. The final reasoned opinion shall include the name of the SEP holder, of the evaluator and of the peer evaluator, the SEP subject to the essentiality check, the relevant standard, a summary of the examination and peer evaluation procedure, the preliminary conclusion of the evaluator, the result of the peer evaluation and the reasons on which that result is based. |
Amendment 176
Proposal for a regulation
Article 34 – paragraph 1 – subparagraph 1 a (new)
| Text proposed by the Commission | Amendment |
| The FRAND determination shall not apply to existing licensing agreements during their application term. |
Amendment 177
Proposal for a regulation
Article 34 – paragraph 4
| Text proposed by the Commission | Amendment |
| 4. The obligation to initiate FRAND determination pursuant to paragraph 1 prior to the court proceedings is without prejudice to the possibility for either party to request, pending the FRAND determination, the competent court of a Member State to issue a provisional injunction of a financial nature against the alleged infringer. The provisional injunction shall exclude the seizure of property of the alleged infringer and the seizure or delivery up of the products suspected of infringing a SEP. Where national law provides that the provisional injunction of a financial nature can only be requested where a case is pending on the merits, either party may bring a case on the merits before the competent court of a Member State for that purpose. However, the parties shall request the competent court of a Member State to suspend the proceedings on the merits for the duration of the FRAND determination. In deciding whether to grant the provisional injunction, the competent court of a Member States shall consider that a procedure for FRAND determination is ongoing. | 4. The obligation to initiate FRAND determination pursuant to paragraph 1 is without prejudice to the possibility for either party to request, pending the FRAND determination, the competent court of a Member State to issue a provisional injunction of a financial nature against the alleged infringer. The provisional injunction shall exclude the seizure of property of the alleged infringer and the seizure or delivery up of the products suspected of infringing a SEP. Where national law provides that the provisional injunction of a financial nature can only be requested where a case is pending on the merits, either party may bring a case on the merits before the competent court of a Member State for that purpose. However, the parties shall request the competent court of a Member State to suspend the proceedings on the merits for the duration of the FRAND determination. In deciding whether to grant the provisional injunction, the competent court of a Member State shall consider that a procedure for FRAND determination is ongoing. |
Amendment 178
Proposal for a regulation
Article 34 – paragraph 5
| Text proposed by the Commission | Amendment |
| 5. Once the FRAND determination is terminated, the whole range of measures, including provisional, precautionary and corrective measures, shall be available to parties. | 5. Once the FRAND determination is terminated, the whole range of measures, including provisional, precautionary and corrective measures, shall be available to the parties. |
Amendment 179
Proposal for a regulation
Article 36 – paragraph 1 – point d
| Text proposed by the Commission | Amendment |
| (d) the commercial name of the standard and the name of the standard developing organisation. | (d) the commercial name of the standard and the name of the relevant standard developing organisation. |
Amendment 180
Proposal for a regulation
Article 36 – paragraph 1 – point f
| Text proposed by the Commission | Amendment |
| (f) references to any other FRAND determination, if applicable. | (f) references to any other related FRAND determination, if applicable. |
Amendment 181
Proposal for a regulation
Article 36 – paragraph 2 – introductory part
| Text proposed by the Commission | Amendment |
| 2. Where the request to initiate a FRAND determination is made by a SEP holder, in addition to the information listed in paragraph (1), it shall contain the following information: | 2. Where the request to initiate a FRAND determination is made by a SEP holder, it shall contain, in addition to the information listed in paragraph (1), the following information: |
Amendment 182
Proposal for a regulation
Article 37 – paragraph 1
| Text proposed by the Commission | Amendment |
| 1. Unless otherwise agreed by the parties, the period from the date of the submission of the request to continue the FRAND determination in accordance with Article 38(5)(b) or Article 38(3)(c) or Article 38(4)(a), second sentence, or Article 38(4)(c), as applicable, until the date of the termination of the procedure shall not exceed 9 months. | 1. Unless otherwise agreed by the parties, the period from the date of the submission of the request to continue the FRAND determination in accordance with Article 38(3)(b) or Article 38(3)(c) or Article 38(4)(a), second sentence, or Article 38(4)(c), as applicable, until the date of the termination of the procedure shall not exceed 9 months. |
Amendment 183
Proposal for a regulation
Article 38 – paragraph 1
| Text proposed by the Commission | Amendment |
| 1. The competence centre shall notify the request to the responding party within 7 days and shall inform the requesting party thereof. | 1. The competence centre shall notify the request to the responding party within 7 days, including the information submitted pursuant to Article 36, and shall inform the requesting party thereof. |
Amendment 184
Proposal for a regulation
Article 38 – paragraph 2
| Text proposed by the Commission | Amendment |
| 2. The responding party shall notify the competence centre within 15 days from the receipt of the notification of the request for FRAND determination from the competence centre in accordance with paragraph (1). The response shall indicate whether the responding party agrees to the FRAND determination and whether it commits to comply with its outcome. | 2. The responding party shall notify the competence centre within 15 days from the receipt of the notification of the request for FRAND determination from the competence centre in accordance with paragraph (1). The response shall indicate whether the responding party agrees to the FRAND determination in case of disagreement, include the reasons for declining to participate. |
Amendment 185
Proposal for a regulation
Article 38 – paragraph 3 – introductory part
| Text proposed by the Commission | Amendment |
| 3. Where the responding party does not reply within the time limit laid down in paragraph (2) or informs the competence centre of its decision not to participate in the FRAND determination, or not to commit to comply with the outcome, the following shall apply: | 3. Where the responding party does not reply within the time limit laid down in paragraph (2) or informs the competence centre of its decision not to participate in the FRAND determination, the following shall apply: |
Amendment 186
Proposal for a regulation
Article 38 – paragraph 3 – point a
| Text proposed by the Commission | Amendment |
| (a) the competence centre shall notify the requesting party thereof and invite it to indicate within seven days whether it requests the continuation of the FRAND determination and whether it commits to comply with the outcome of the FRAND determination; | (a) the competence centre shall notify the requesting party thereof and invite it to indicate within seven days whether it requests the continuation of the FRAND determination; |
Amendment 187
Proposal for a regulation
Article 38 – paragraph 3 – point b
| Text proposed by the Commission | Amendment |
| (b) where the requesting party requests the continuation of the FRAND determination and commits to its outcome, the FRAND determination shall continue, but Article 34(1) shall not apply to the court proceedings for the requesting party in relation to the same subject matter. | (b) where the requesting party requests the continuation of the FRAND determination, the FRAND determination shall continue, but Article 34(1) shall not apply to the court proceedings for the requesting party in relation to the same subject matter. |
Amendment 188
Proposal for a regulation
Article 38 – paragraph 4 – introductory part
| Text proposed by the Commission | Amendment |
| 4. Where the responding party agrees to the FRAND determination and commits to comply with its outcome pursuant to paragraph (2), including where such commitment is contingent upon the commitment of the requesting party to comply with the outcome of the FRAND determination, the following shall apply: | 4. Where the responding party agrees to the FRAND determination the competence centre shall notify the requesting party thereof. |
Amendment 189
Proposal for a regulation
Article 38 – paragraph 4 – point a
| Text proposed by the Commission | Amendment |
| (a) the competence centre shall notify the requesting party thereof and request to inform the competence centre within seven days whether it also commits to comply with the outcome of the FRAND determination. In case of acceptance of the commitment by the requesting party, the FRAND determination shall continue and the outcome shall be binding for both parties; | deleted |
Amendment 190
Proposal for a regulation
Article 38 – paragraph 4 – point b
| Text proposed by the Commission | Amendment |
| (b) where the requesting party does not reply within the time limit referred to in subparagraph (a) or informs the competence centre of its decision not to commit to comply with outcome of the FRAND determination, the competence centre shall notify the responding party and invite it to indicate within seven days whether it requests the continuation of the FRAND determination. | deleted |
Amendment 191
Proposal for a regulation
Article 38 – paragraph 4 – point c
| Text proposed by the Commission | Amendment |
| (c) where the responding party requests the continuation of the FRAND determination, the FRAND determination shall continue, but Article 34(1) shall not apply to the court proceedings for by the responding party in relation to the same subject matter; | deleted |
Amendment 192
Proposal for a regulation
Article 38 – paragraph 4 – point d
| Text proposed by the Commission | Amendment |
| (d) where the responding party fails to request, within the time-limit referred to in subparagraph (b), the continuation of the FRAND determination, the competence centre shall terminate the FRAND determination. | deleted |
Amendment 193
Proposal for a regulation
Article 38 – paragraph 4 a (new)
| Text proposed by the Commission | Amendment |
| 4a. Each party may, at any time during the FRAND determination process, declare to commit to comply with its outcome. The declaring party may make its commitment to comply subject to the other party's commitment to the outcome. This shall not terminate the FRAND determination process. |
Amendment 194
Proposal for a regulation
Article 38 – paragraph 5
| Text proposed by the Commission | Amendment |
| 5. Where either party commits to comply with the outcome of the FRAND determination, while the other party fails to do so within the applicable time limits, the competence centre shall adopt a notice of commitment to the FRAND determination and notify the parties within 5 days from the expiry of the time-limit to provide the commitment. The notice of commitment shall include the names of the parties, the subject-matter of the FRAND determination, a summary of the procedure and information on the commitment provided or on the failure to provide commitment for each party. | deleted |
Amendment 195
Proposal for a regulation
Article 38 – paragraph 6
| Text proposed by the Commission | Amendment |
| 6. The FRAND determination shall concern a global SEP licence, unless otherwise specified by the parties in case both parties agree to the FRAND determination or by the party that requested the continuation of the FRAND determination. SMEs that are parties to the FRAND determination may request to limit the territorial scope of the FRAND determination. | 6. The FRAND determination shall concern a global SEP licence, unless otherwise specified by the parties in case both parties agree to the FRAND determination or by the party that requested the continuation of the FRAND determination. SMEs and start-ups that are parties to the FRAND determination may request to limit the territorial scope of the FRAND determination. |
Amendment 196
Proposal for a regulation
Article 39 – title
| Text proposed by the Commission | Amendment |
| Selection of conciliators | Selection of a panel of conciliators |
Amendment 197
Proposal for a regulation
Article 39 – paragraph 1
| Text proposed by the Commission | Amendment |
| 1. Following the reply to the FRAND determination by the responding party in accordance with Article 38(2), or the request to continue in accordance with Article 38(5), the competence centre shall propose at least 3 candidates for the FRAND determination from the roster of conciliators referred to Article 27(2). The parties or party shall select one of the proposed candidates as a conciliator for the FRAND determination. | 1. Following the reply to the FRAND determination by the responding party in accordance with Article 38(2), the requesting and responding parties shall each appoint one conciliator from the roster of conciliators referred to Article 27(2) to the panel of conciliators. The third conciliator shall be appointed by the competence centre from the roster of conciliators referred to in Article 27(2). |
Amendment 198
Proposal for a regulation
Article 39 – paragraph 2
| Text proposed by the Commission | Amendment |
| 2. If the parties do not agree on a conciliator, the competence centre shall select one candidate from the roster of conciliators referred to in Article 27(2). | deleted |
Amendment 199
Proposal for a regulation
Article 40 – title
| Text proposed by the Commission | Amendment |
| Appointment of conciliators |
Amendment 200
Proposal for a regulation
Article 40 – paragraph 1
| Text proposed by the Commission | Amendment |
| 1. The selected candidate shall communicate to the competence centre the acceptance to take up the task of a conciliator for the FRAND determination, which shall notify the communication of acceptance to the parties. | 1. The selected candidates shall communicate to the competence centre the acceptance to take up the task of a conciliator for the FRAND determination, which shall notify the communication of acceptance to the parties. |
Amendment 201
Proposal for a regulation
Article 40 – paragraph 2
| Text proposed by the Commission | Amendment |
| 2. The day following the notification of the acceptance to the parties, the conciliator is appointed, and the competence centre shall refer the case to him/her. | 2. The day following the notification of the acceptance to the parties, the panel of conciliators is appointed, and the competence centre shall refer the case to the panel of conciliators. |
Amendment 202
Proposal for a regulation
Article 42 – paragraph 1
| Text proposed by the Commission | Amendment |
| 1. After the case is referred to the conciliator in accordance with Article 40(2), he/she shall examine whether the request contains the information required under Article 36 in accordance with the Rules of procedure. | 1. After the case is referred to the panel of conciliators in accordance with Article 40(2), it shall examine whether the request contains the information required under Article 36 in accordance with the Rules of procedure. |
Amendment 203
Proposal for a regulation
Article 42 – paragraph 2
| Text proposed by the Commission | Amendment |
| 2. He/she shall communicate to the parties or the party requesting the continuation of the FRAND determination the conduct as well as the schedule of procedure. | 2. The panel of conciliators shall communicate to the parties or the party requesting the continuation of the FRAND determination the conduct as well as the schedule of procedure. |
Amendment 204
Proposal for a regulation
Article 43 – paragraph 1
| Text proposed by the Commission | Amendment |
| The conciliator shall invite each party to file written submissions setting out its arguments concerning the determination of the applicable FRAND terms and conditions, including supporting documentation and evidence, and set appropriate time limits. | The panel of conciliators shall invite each party to file written submissions setting out its arguments concerning the determination of the applicable FRAND terms and conditions, including supporting documentation and evidence, and set appropriate time limits. |
Amendment 205
Proposal for a regulation
Article 44 – paragraph 1
| Text proposed by the Commission | Amendment |
| 1. A party may submit an objection stating that the conciliator is unable to make a FRAND determination on legal grounds, such as a previous binding FRAND determination or agreement between the parties, no later than in the first written submission. The other party shall be given opportunity to submit its observations. | 1. A party may submit an objection stating that the panel of conciliators is unable to make a FRAND determination on legal grounds, such as a previous binding FRAND determination or agreement between the parties, at any time. The other party shall be given opportunity to submit its observations. |
Amendment 206
Proposal for a regulation
Article 44 – paragraph 2
| Text proposed by the Commission | Amendment |
| 2. The conciliator shall decide on the objection and either reject it as unfounded before considering the merits of the case or join it to the examination of the merits of the FRAND determination. If the conciliator overrules the objection or joins it to the examination of the merits of the determination of FRAND terms and conditions, it shall resume consideration of the determination of FRAND terms and conditions. | 2. The panel of conciliators shall decide on the objection and either reject it as unfounded before considering the merits of the case or join it to the examination of the merits of the FRAND determination. If the panel of conciliators overrules the objection or joins it to the examination of the merits of the determination of FRAND terms and conditions, it shall resume consideration of the determination of FRAND terms and conditions. |
Amendment 207
Proposal for a regulation
Article 44 – paragraph 3
| Text proposed by the Commission | Amendment |
| 3. If the conciliator decides that the objection is founded, it shall terminate the FRAND determination and shall draw up a report stating the reasons of the decision. | 3. If the panel of conciliators decides that the objection is founded, it shall terminate the FRAND determination and shall draw up a report stating the reasons of the decision. |
Amendment 208
Proposal for a regulation
Article 45 – paragraph 1
| Text proposed by the Commission | Amendment |
| 1. The conciliator shall assist the parties in an independent and impartial manner in their endeavour to reach a determination of FRAND terms and conditions. | 1. The panel of conciliators shall assist the parties in an independent and impartial manner in their endeavour to reach a determination of FRAND terms and conditions. |
Amendment 209
Proposal for a regulation
Article 45 – paragraph 2
| Text proposed by the Commission | Amendment |
| 2. The conciliator may invite the parties or the party requesting the continuation of the FRAND determination to meet with him/her or may communicate with him/her orally or in writing. | 2. The panel of conciliators may invite the parties or the party requesting the continuation of the FRAND determination to meet with it or may communicate with it orally or in writing. |
Amendment 210
Proposal for a regulation
Article 45 – paragraph 3
| Text proposed by the Commission | Amendment |
| 3. The parties or the party requesting the continuation of the FRAND determination shall cooperate in good faith with the conciliator and, in particular, shall attend the meetings, comply with his/her requests to submit all relevant documents, information and explanations as well as use the means at their disposal to enable the conciliator to hear witnesses and experts whom the conciliator might call. | 3. The parties or the party requesting the continuation of the FRAND determination shall cooperate in good faith with the panel of conciliators and, in particular, shall attend the meetings, comply with its requests to submit all relevant documents, information and explanations as well as use the means at their disposal to enable the panel of conciliators to hear witnesses and experts whom the conciliator might call. |
Amendment 211
Proposal for a regulation
Article 45 – paragraph 5
| Text proposed by the Commission | Amendment |
| 5. At any stage of the procedure upon request by both parties, or the party requesting the continuation of the FRAND determination, as applicable, the conciliator shall terminate the FRAND determination. | 5. At any stage of the procedure upon request by both parties, or the party requesting the continuation of the FRAND determination, as applicable, the panel of conciliators shall terminate the FRAND determination. |
Amendment 212
Proposal for a regulation
Article 46 – paragraph 1 – point a
| Text proposed by the Commission | Amendment |
| (a) fails to comply with any request of the conciliator, Rules of procedure or schedule of procedure referred to in Article 42(2), | (a) fails to comply with Article 45(3) or any request of the panel of conciliators Rules of procedure or schedule of procedure referred to in Article 42(2), or |
Amendment 213
Proposal for a regulation
Article 46 – paragraph 1 – point b
| Text proposed by the Commission | Amendment |
| (b) withdraws its commitment to comply with the outcome of the FRAND determination as set out in Art. 38, or | deleted |
Amendment 214
Proposal for a regulation
Article 46 – paragraph 1 – subparagraph 1
| Text proposed by the Commission | Amendment |
| the conciliator shall inform both parties thereof. | the panel of conciliators shall inform both parties thereof. |
Amendment 215
Proposal for a regulation
Article 46 – paragraph 2 – introductory part
| Text proposed by the Commission | Amendment |
| 2. Having received the notification of the conciliator, the complying party may ask the conciliator to take one of the following actions: | 2. Having received the notification of the panel of conciliators, the complying party may ask the panel of conciliators to take one of the following actions: |
Amendment 216
Proposal for a regulation
Article 46 – paragraph 3
| Text proposed by the Commission | Amendment |
| 3. If the party requesting the continuation of the FRAND determination fails to comply with any request of the conciliator or in any other way fails to comply with a requirement relating to the FRAND determination, the conciliator shall terminate the procedure. | 3. If the party requesting the continuation of the FRAND determination fails to comply with any request of the panel of conciliators or in any other way fails to comply with a requirement relating to the FRAND determination, the panel of conciliators shall terminate the procedure. |
Amendment 217
Proposal for a regulation
Article 47 – paragraph 2
| Text proposed by the Commission | Amendment |
| 2. Where a parallel proceeding has been initiated before or during the FRAND determination by a party, the conciliator, or where he/she has not been appointed, the competence centre, shall terminate the FRAND determination upon the request of any other party. | 2. Where a parallel proceeding has been initiated before or during the FRAND determination by a party, the panel of conciliators, or where it has not been appointed, the competence centre, shall terminate the FRAND determination upon the request of the other party. |
Amendment 218
Proposal for a regulation
Article 48 – paragraph 1
| Text proposed by the Commission | Amendment |
| 1. Without prejudice to the protection of confidentiality in accordance with Article 54(3) at any time during the FRAND determination, at the request of a party or on its own motion, the conciliator may request the production of documents or other evidence. | 1. Without prejudice to the protection of confidentiality in accordance with Article 54(3) at any time during the FRAND determination, at the request of a party or on its own motion, the panel of conciliators may request the production of documents or other evidence. |
Amendment 219
Proposal for a regulation
Article 48 – paragraph 2
| Text proposed by the Commission | Amendment |
| 2. The conciliator may examine publicly available information and the competence centre’s register and confidential and non-confidential reports of other FRAND determinations, as well as non-confidential documents and information produced by or submitted to the competence centre. | 2. The panel of conciliators may examine publicly available information and the competence centre’s register, database and confidential and non-confidential reports of other FRAND determinations, aggregate royalty determinations and results of essentiality checks, as well as other non-confidential documents and information produced by or submitted to the competence centre. |
Amendment 220
Proposal for a regulation
Article 49 – paragraph 1
| Text proposed by the Commission | Amendment |
| The conciliator may hear witnesses and experts requested by either party provided that the evidence is necessary for the FRAND determination and that there is time to consider such evidence. | The panel of conciliators may hear witnesses and experts requested by either party provided that the evidence is necessary for the FRAND determination and that there is time to consider such evidence. |
Amendment 221
Proposal for a regulation
Article 50 – paragraph 1
| Text proposed by the Commission | Amendment |
| 1. At any time during the FRAND determination, the conciliator or a party on its own motion or by invitation of the conciliator may submit proposals for a determination of FRAND terms and conditions | 1. At any time during the FRAND determination, the panel of conciliators or a party on its own motion or by invitation of the panel of conciliators may submit proposals for a determination of FRAND terms and conditions. |
Amendment 222
Proposal for a regulation
Article 50 – paragraph 3
| Text proposed by the Commission | Amendment |
| 3. When submitting suggestions for FRAND terms and conditions, the conciliator shall take into account the impact of the determination FRAND terms and conditions on the value chain and on the incentives to innovation of both the SEP holder and the stakeholders in the relevant value chain. To that end, the conciliator may rely on the expert opinion referred to in Article 18 or, in case of absence of such an opinion request additional information and hear experts or stakeholders. | 3. When submitting suggestions for FRAND terms and conditions, the panel of conciliators shall take into account the impact of the determination FRAND terms and conditions on the value chain and on the incentives to innovation of both the SEP holder and the stakeholders in the relevant value chain. To that end, the panel of conciliators may rely on the expert opinion referred to in Article 18 or, in case of absence of such an opinion request additional information and hear experts or stakeholders. |
Amendment 223
Proposal for a regulation
Article 51 – title
| Text proposed by the Commission | Amendment |
| Recommendation of a determination of FRAND terms and conditions by the conciliator | Recommendation of a determination of FRAND terms and conditions by the panel of conciliators |
Amendment 224
Proposal for a regulation
Article 51 – paragraph 1
| Text proposed by the Commission | Amendment |
| The conciliator shall notify the parties a written recommendation of a determination of FRAND terms and conditions at the latest 5 months before the time limit referred to in Article 37. | The panel of conciliators shall notify the parties a written recommendation of a determination of FRAND terms and conditions at the latest 5 months before the time limit referred to in Article 37. |
Amendment 225
Proposal for a regulation
Article 52 – paragraph 1
| Text proposed by the Commission | Amendment |
| Following the notification of the written recommendation of FRAND terms and conditions by the conciliator, either party shall submit a detailed and reasoned proposal for a determination of FRAND terms and conditions. If a party has already submitted a proposal for the determination of FRAND terms and conditions, revised versions shall be submitted, if necessary, taking into account the recommendation of the conciliator. | Following the notification of the written recommendation of FRAND terms and conditions by the panel of conciliators, either party shall submit a detailed and reasoned proposal for a determination of FRAND terms and conditions. If a party has already submitted a proposal for the determination of FRAND terms and conditions, revised versions shall be submitted, if necessary, taking into account the recommendation of the panel of conciliators. |
Amendment 226
Proposal for a regulation
Article 53 – paragraph 1
| Text proposed by the Commission | Amendment |
| If the conciliator considers it necessary or if a party so requests, an oral hearing shall be held within 20 days after the submission of reasoned proposals for determination of FRAND terms and conditions. | If the panel of conciliators considers it necessary or if a party so requests, an oral hearing shall be held within 20 days after the submission of reasoned proposals for determination of FRAND terms and conditions. |
Amendment 227
Proposal for a regulation
Article 54 – paragraph 1
| Text proposed by the Commission | Amendment |
| 1. When the conciliator receives information for the purposes of FRAND determination from a party, it shall disclose it to the other party so that the other party has the opportunity to present any explanation. | 1. When the panel of conciliators receives information for the purposes of FRAND determination from a party, it shall disclose it to the other party so that the other party has the opportunity to present any explanation. |
Amendment 228
Proposal for a regulation
Article 54 – paragraph 2
| Text proposed by the Commission | Amendment |
| 2. A party may request the conciliator that specific information in a submitted document is kept confidential. | 2. A party may request the panel of conciliators that specific information in a submitted document is kept confidential. |
Amendment 229
Proposal for a regulation
Article 54 – paragraph 3
| Text proposed by the Commission | Amendment |
| 3. When a party requests the information in a document it had submitted to be kept confidential, the conciliator shall not disclose that information to the other party. The party invoking confidentiality shall also provide a non-confidential version of the information submitted in confidence in sufficient detail to permit a reasonable understanding of the substance of the information submitted in confidence. This non-confidential version shall be disclosed to the other party. | 3. When a party requests the information in a document it had submitted to be kept confidential, the panel of conciliators shall not disclose that information to the other party. The party invoking confidentiality shall also provide a non-confidential version of the information submitted in confidence in sufficient detail to permit a reasonable understanding of the substance of the information submitted in confidence. This non-confidential version shall be disclosed to the other party. |
Amendment 230
Proposal for a regulation
Article 55 – paragraph 1
| Text proposed by the Commission | Amendment |
| 1. At the latest 45 days before the end of the time limit referred to in Article 37, the conciliator shall submit a reasoned proposal for a determination of FRAND terms and conditions to the parties or, as applicable, the party requesting the continuation of the FRAND determination. | 1. At the latest 45 days before the end of the time limit referred to in Article 37, the panel of conciliators shall submit a reasoned proposal for a determination of FRAND terms and conditions to the parties or, as applicable, the party requesting the continuation of the FRAND determination. |
Amendment 231
Proposal for a regulation
Article 55 – paragraph 2
| Text proposed by the Commission | Amendment |
| 2. Either party may submit observations to the proposal and suggest amendments to the proposal by the conciliator, who may reformulate its proposal to take into account the observations submitted by the parties and shall inform the parties or the party requesting the continuation of the FRAND determination, as applicable, of such reformulation. | 2. Either party may submit observations to the proposal and suggest amendments within a deadline set by the panel of conciliators, who may reformulate its proposal to take into account the observations submitted by the parties and shall promptly inform the parties or the party requesting the continuation of the FRAND determination, as applicable, of such reformulation. |
Amendment 232
Proposal for a regulation
Article 56 – paragraph 1 – point b
| Text proposed by the Commission | Amendment |
| (b) a written declaration is signed by the parties accepting the reasoned proposal for a determination of FRAND terms and conditions by the conciliator referred to in Article 55; | (b) a written declaration is signed by the parties accepting the reasoned proposal for a determination of FRAND terms and conditions by the panel of conciliators referred to in Article 55; |
Amendment 233
Proposal for a regulation
Article 56 – paragraph 1 – point c
| Text proposed by the Commission | Amendment |
| (c) a written declaration is made by a party not to accept the reasoned proposal of a determination of FRAND terms and conditions by the conciliator referred to in Article 55; | (c) a written declaration is made by a party not to accept the reasoned proposal of a determination of FRAND terms and conditions by the panel of conciliators referred to in Article 55; |
Amendment 234
Proposal for a regulation
Article 56 – paragraph 1 – point d
| Text proposed by the Commission | Amendment |
| (d) a party has not submitted a reply to the reasoned proposal of a determination of FRAND terms and conditions by the conciliator referred to in Article 55. | (d) a party has not submitted a reply to the reasoned proposal of a determination of FRAND terms and conditions by the panel of conciliators referred to in Article 55. |
Amendment 235
Proposal for a regulation
Article 56 – paragraph 4
| Text proposed by the Commission | Amendment |
| 4. A competent court of a Member State, asked to decide on determination of FRAND terms and conditions, including in abuse of dominance cases among private parties, or SEP infringement claim concerning a SEP in force in one or more Member States subject to the FRAND determination shall not proceed with the examination of the merits of that claim, unless it has been served with a notice of termination of the FRAND determination, or, in the cases foreseen in Article 38(3)(b) and Article 38(4)(c), with a notice of commitment pursuant to Article 38(5). | 4. A competent court of a Member State, asked to decide on determination of FRAND terms and conditions, including in abuse of dominance cases among private parties, or SEP infringement claim concerning a SEP in force in one or more Member States subject to the FRAND determination shall not proceed with the examination of the merits of that claim, unless it has been served with a notice of termination of the FRAND determination. |
Amendment 236
Proposal for a regulation
Article 57 – paragraph 1
| Text proposed by the Commission | Amendment |
| 1. The conciliator shall provide the parties with a written report following the termination of the FRAND determination in cases listed in Article 56(1), point (c) and Article 56(1), point (d). | 1. The panel of conciliators shall provide the parties with a written report following the termination of the FRAND determination in cases listed in Article 56(1), point (c) and Article 56(1), point (d). |
Amendment 237
Proposal for a regulation
Article 57 – paragraph 2 -– point d
| Text proposed by the Commission | Amendment |
| (d) a non-confidential methodology and the assessment of the determination of FRAND terms and conditions by the conciliator. | (d) a non-confidential methodology and the assessment of the determination of FRAND terms and conditions by the panel of conciliators. |
Amendment 238
Proposal for a regulation
Article 58 – paragraph 1
| Text proposed by the Commission | Amendment |
| 1. Except the methodology and the assessment of the FRAND determination by the conciliator referred to in Article 57(2), point (d), the competence centre shall keep confidential the determination of FRAND terms and conditions, any proposals for determination of FRAND terms and conditions submitted during the procedure and any documentary or other evidence disclosed during the FRAND determination which is not publicly available, unless otherwise provided by the parties. | 1. Except the methodology and the assessment of the FRAND determination by the panel of conciliators referred to in Article 57(2), point (d), the competence centre shall keep confidential the determination of FRAND terms and conditions, any proposals for determination of FRAND terms and conditions submitted during the procedure and any documentary or other evidence disclosed during the FRAND determination which is not publicly available, unless otherwise provided by the parties. |
Amendment 239
Proposal for a regulation
Article 60 – paragraph 1 a (new)
| Text proposed by the Commission | Amendment |
| 1a. The period specified in days ends on the last day, a period marked in weeks ends at the end of the day in the last week, a period specified in months ends on the expiry of the day corresponding to the initial day of the period, and if there was no such day in the last month - then on the last day of that month, a period marked in years ends on the expiry of the day corresponding to the initial day of a given period, and if there was no such day, the end date will be the last day of that month. |
Amendment 240
Proposal for a regulation
Article 61 – title
| Text proposed by the Commission | Amendment |
| Training, advice and support | SEP Licensing Assistance Hub for SMEs and start ups |
Amendment 241
Proposal for a regulation
Article 61 – paragraph 1
| Text proposed by the Commission | Amendment |
| 1. The competence centre shall offer training and support on SEP related matters for micro, small and medium-size enterprises free of charge. | 1. The competence centre shall set up and manage a SEP Licensing Assistance Hub for SMEs and start-ups which shall help the SMEs and start-ups with following tasks free of charge: |
Amendment 242
Proposal for a regulation
Article 61 – paragraph 1 – point a (new)
| Text proposed by the Commission | Amendment |
| (a) identification of which SEPs might be relevant to their product or service, possible licensors and patent pools, in the event that the SME or the start-up is a SEP implementer; |
Amendment 243
Proposal for a regulation
Article 61 – paragraph 1 – point b (new)
| Text proposed by the Commission | Amendment |
| (b) identification of possible licensees and, with the help of the European Observatory on infringements of intellectual property rights, advise them on how to best enforce their SEP rights on European and global level, in the event that the SME or the start-up is a SEP holder; |
Amendment 244
Proposal for a regulation
Article 61 – paragraph 1 – point c (new)
| Text proposed by the Commission | Amendment |
| (c) offer training and support on SEP related matters. |
Amendment 245
Proposal for a regulation
Article 61 – paragraph 1 – subparagraph 1 a (new)
| Text proposed by the Commission | Amendment |
| The competence centre shall not be held liable for any help provided to SMEs and start-ups under this paragraph. When performing the tasks referred to in this paragraph, the competence centre may work in close cooperation with national patent offices and governmental schemes that support SMEs. |
Amendment 246
Proposal for a regulation
Article 61 – paragraph 1 a (new)
| Text proposed by the Commission | Amendment |
| 1a. The competence centre shall, on a regular basis, proactively seek input from SMEs and start-ups on what training and support would be most helpful. |
Amendment 247
Proposal for a regulation
Article 61 – paragraph 2
| Text proposed by the Commission | Amendment |
| 2. The competence centre may commission studies, if it considers it necessary, to assist micro, small and medium-size enterprises on SEP related matters. | 2. The competence centre may commission studies, if it considers it necessary, to assist SMEs on SEP related matters. Such studies may include analysis, based on information provided by SEP holders and implementers regarding licenses entered into, royalties paid or collected, and products sold for IoT applications, and the competence centre may provide estimates of licensing costs for such applications to SMEs. |
Amendment 248
Proposal for a regulation
Article 61 – paragraph 3
| Text proposed by the Commission | Amendment |
| 3. The costs of the services referred to in paragraph (1) and paragraph (2) shall be borne by the EUIPO. | 3. The costs of the services referred to in paragraph (1) and paragraph (2) shall be borne by the EUIPO and the EUIPO shall ensure that the services are sufficiently funded and resourced. |
Amendment 249
Proposal for a regulation
Article 61 – paragraph 3 a (new)
| Text proposed by the Commission | Amendment |
| 3a. Paragraphs 1 and 2 shall not apply to patent assertion entities or to SMEs, which are a subsidiary, affiliate, or owned or directly or indirectly controlled by another natural or legal person that is not a SME itself. |
Amendment 250
Proposal for a regulation
Article 62 – paragraph 2
| Text proposed by the Commission | Amendment |
| 2. If a SEP holder offers more favourable FRAND terms and conditions to micro, small and medium-sized enterprises, or concludes a SEP licence that includes more favourable terms and conditions, pursuant to paragraph (1), such FRAND terms and conditions shall not be considered in a FRAND determination, unless the FRAND determination is conducted solely with regard to FRAND terms and conditions for another micro, small or medium-sized enterprise. | 2. When a SEP holder, or concludes a SEP licence that includes more favourable terms and conditions, than those offered to companies that are not an SME pursuant to paragraph (1), such FRAND terms and conditions shall not be considered in a FRAND determination, unless the FRAND determination is conducted solely with regard to FRAND terms and conditions for another micro, small or medium-sized enterprise. |
Amendment 251
Proposal for a regulation
Article 62 – paragraph 3
| Text proposed by the Commission | Amendment |
| 3. SEP holders shall also consider discounts or royalty-free licensing for low sales volumes irrespective of the size of the implementer taking the licence. Such discounts or royalty-free licensing shall be fair, reasonable and non-discriminatory and shall be available in the electronic database as set out in Article 5(2), point (b). | 3. SEP holders shall also consider discounts, spreading payments into interest-free instalments or royalty-free licensing for low sales volumes irrespective of the size of the implementer taking the licence. Such discounts or royalty-free licensing shall be fair, reasonable and non-discriminatory and shall be available in the electronic database as set out in Article 5(2), point (b). |
Amendment 252
Proposal for a regulation
Article 62 – paragraph 3 a (new)
| Text proposed by the Commission | Amendment |
| 3a. Any benefits granted to SMEs under this Regulation may be withheld or withdrawn in cases of circumvention or misuse. |
Amendment 253
Proposal for a regulation
Article 63 – paragraph 4
| Text proposed by the Commission | Amendment |
| 4. The level of the fees shall be reasonable and shall correspond to the costs of the services. It shall take into account the situation of micro, small and medium-sized enterprises. | 4. The level of the fees shall be reasonable and limited to the costs of the services. It shall take into account the situation of micro, small and medium-sized enterprises. |
Amendment 254
Proposal for a regulation
Article 65 a (new)
| Text proposed by the Commission | Amendment |
| Article 65a | |
| Reasoned request to the Commission | |
| A SEP holder or a SEP implementer may submit a reasoned request to the Commission to determine whether: | |
| (a) the SEP licensing negotiations on FRAND terms and conditions do not give rise to significant difficulties or inefficiencies affecting the functioning of the internal market as regards identified implementations of certain standards or parts thereof within 1 month of the publication of the standard by the Standard Development Organisation; | |
| (b) the functioning of the internal market is severely distorted due to significant difficulties or inefficiencies in the licensing of SEPs for particular existing implementations of standards or parts thereof within 12 months of the entry into force of this Regulation. |
Amendment 255
Proposal for a regulation
Article 65 b (new)
| Text proposed by the Commission | Amendment |
| Article 65b | |
| Delegated acts with respect to new standards | |
| 1. Within 4 months of the receipt of the request referred to in paragraph 1, the Commission is empowered to adopt delegated acts in accordance with Article 67 and after an appropriate consultation process including all relevant stakeholders and to establish a list of implementations, standards or parts thereof, where SEP licensing negotiations on FRAND terms do not give rise to significant difficulties or inefficiencies affecting the functioning of the internal market. | |
| 2. The Commission shall review the list referred to in paragraph 1 once a year in order to determine if it needs to be updated. | |
| 3. The procedure under this Article shall not affect the time limits set out in Articles 17 and 18. |
Amendment 256
Proposal for a regulation
Article 65 c (new)
| Text proposed by the Commission | Amendment |
| Article 65c | |
| Delegated acts with respect to existing standards | |
| 1. The Commission shall conduct appropriate consultations including relevant stakeholders. | |
| 2. After considering all evidence and expert opinions, the Commission is empowered to adopt a delegated act in accordance with Article 67 to establish a list determining which of the existing implementations of standards or parts thereof can be notified in accordance with Article 66(1) or (2). By means of that delegated act, the Commission shall also determine which procedures, notification and publication requirements set out in this Regulation apply to those existing standards, parts thereof or relevant implementations. The delegated act shall be adopted by ... [OJ: please insert the date 18 months from entry into force of this Regulation]. The Commission shall check once a year if the list needs to be updated. |
Amendment 257
Proposal for a regulation
Article 66 – paragraph 1
| Text proposed by the Commission | Amendment |
| 1. Until [OJ: please insert the date = 28 months from the entry into force of this regulation] holders of SEPs essential to a standard published before the entry into force of this Regulation (‘existing standards’), for which FRAND commitments have been made, may notify the competence centre pursuant to Articles 14, 15 and 17 of any of the existing standards or parts thereof that will be determined in the delegated act in accordance with paragraph (4). The procedures, notification and publication requirements set out in this Regulation apply mutatis mutandis. | 1. Until … [OJ: please insert the date = 28 months from the entry into force of this Regulation] holders of SEPs essential to a standard published before the entry into force of this Regulation (‘existing standards’), for which FRAND commitments have or have not been made, may notify the competence centre pursuant to Articles 14, 15 and 17 of any of the existing standards or parts thereof that will be determined in the delegated act in accordance with Article 65c. The procedures, notification and publication requirements set out in this Regulation apply mutatis mutandis. |
Amendment 258
Proposal for a regulation
Article 66 – paragraph 4
| Text proposed by the Commission | Amendment |
| 4. Where the functioning of the internal market is severely distorted due to inefficiencies in the licensing of SEPs, the Commission shall, after an appropriate consultation process, by means of a delegated act pursuant to Article 67, determine which of the existing standards, parts thereof or relevant use cases can be notified in accordance with paragraph (1) or paragraph (2), or for which an expert opinion can be requested in accordance with paragraph (3). The delegated act shall also determine which procedures, notification and publication requirements set out in this Regulation apply to those existing standards. The delegated act shall be adopted within [OJ: please insert the date = 18 months from entry into force of this regulation]. | deleted |
Amendment 259
Proposal for a regulation
Article 67 – paragraph 2
| Text proposed by the Commission | Amendment |
| 2. The power to adopt a delegated act referred to in Articles 1(4), 4(5) and 66(4) shall be conferred on the Commission for an indeterminate period of time from the date of entry into force of this Regulation. | 2. The power to adopt a delegated act referred to in Articles 4(5), 65b and 65c shall be conferred on the Commission for an indeterminate period of time from the date of entry into force of this Regulation. |
Amendment 260
Proposal for a regulation
Article 67 – paragraph 3
| Text proposed by the Commission | Amendment |
| 3. The delegation of power referred to in Articles 1(4), 4(5) and 66(4) may be revoked at any time by the European Parliament or by the Council. A decision to revoke shall put an end to the delegation of the power specified in that decision. It shall take effect the day following the publication of the decision in the Official Journal of the European Union or at a later date specified therein. It shall not affect the validity of any delegated acts already in force. | 3. The delegation of power referred to in Articles 4(5), 65b and 65c may be revoked at any time by the European Parliament or by the Council. A decision to revoke shall put an end to the delegation of the power specified in that decision. It shall take effect the day following the publication of the decision in the Official Journal of the European Union or at a later date specified therein. It shall not affect the validity of any delegated acts already in force. |
Amendment 261
Proposal for a regulation
Article 67 – paragraph 6
| Text proposed by the Commission | Amendment |
| 6. A delegated act adopted pursuant to Articles 1(4), 4(5) and 66(4) shall enter into force only if no objection has been expressed either by the European Parliament or the Council within a period of 2 months of notification of that act to the European Parliament and the Council or if, before the expiry of that period, the European Parliament and the Council have both informed the Commission that they will not object. That period shall be extended by 2 months at the initiative of the European Parliament or of the Council. | 6. A delegated act adopted pursuant to Articles 4(5), 65b and 65c shall enter into force only if no objection has been expressed either by the European Parliament or the Council within a period of 2 months of notification of that act to the European Parliament and the Council or if, before the expiry of that period, the European Parliament and the Council have both informed the Commission that they will not object. That period shall be extended by 2 months at the initiative of the European Parliament or of the Council. |
Amendment 262
Proposal for a regulation
Article 70 – paragraph 1
| Text proposed by the Commission | Amendment |
| 1. By [OJ: please insert the date = 5 years from entry into force of this regulation] the Commission shall evaluate the effectiveness and efficiency of the SEP registration and the essentiality check system. | 1. By … [OJ: please insert the date = 5 years from entry into force of this Regulation], and every three years thereafter, the Commission shall evaluate the implementation of this Regulation. The evaluation shall assess the operation of this Regulation, in particular: |
Amendment 263
Proposal for a regulation
Article 70 – paragraph 1 – point a (new)
| Text proposed by the Commission | Amendment |
| (a) the impact, effectiveness and efficiency of the competence centre and its working methods; |
Amendment 264
Proposal for a regulation
Article 70 – paragraph 1 – point b (new)
| Text proposed by the Commission | Amendment |
| (b) the effectiveness and efficiency of the SEP registration and the essentiality check system; and |
Amendment 265
Proposal for a regulation
Article 70 – paragraph 1 – point c (new)
| Text proposed by the Commission | Amendment |
| (c) the impact that the essentiality check system, the aggregate royalties determination and the FRAND determination system have, in particular on the competitiveness of the Union SEP holders on a global level and on innovation in the Union. |
Amendment 266
Proposal for a regulation
Article 70 – paragraph 2
| Text proposed by the Commission | Amendment |
| 2. By [OJ: please insert the date = 8 years from entry into force of this regulation], and every five years thereafter, the Commission shall evaluate the implementation of this Regulation. The evaluation shall assess the operation of this Regulation, in particular the impact, effectiveness and efficiency of the competence centre and its working methods. | deleted |
Amendment 267
Proposal for a regulation
Article 70 – paragraph 3
| Text proposed by the Commission | Amendment |
| 3. When preparing the evaluation reports referred to in paragraphs (1) and (2), the Commission shall consult the EUIPO and stakeholders. | 3. When preparing the evaluation reports referred to in paragraph 1, the Commission shall consult the EUIPO and stakeholders. |
Amendment 268
Proposal for a regulation
Article 70 – paragraph 4
| Text proposed by the Commission | Amendment |
| 4. The Commission shall submit the evaluation reports referred to in paragraphs (1) and (2) together with its conclusions drawn based on those reports to the European Parliament, to the Council, to the European Economic and Social Committee and to the Management Board of the EUIPO. | 4. The Commission shall submit the evaluation reports referred to in paragraph 1, together with its conclusions drawn based on those reports to the European Parliament, to the Council, to the European Economic and Social Committee and to the Management Board of the EUIPO. The evaluation report referred to in paragraph 1 shall be accompanied, where appropriate, by a legislative proposal. |
EXPLANATORY STATEMENT
A Standard Essential Patent (SEP) is a patent protecting a technology that has been declared essential for the implementation of a technical standard adopted by a standardisation body The interplay between patents and standards is important for innovation and growth, as these patents incentivise research and development and enable an adequate return on investment for innovative companies. Standards ensure a broad uptake of interoperable and secure technologies among businesses and consumers. Worldwide, there are around 75 000 SEPs, but these only represent a small share of patents as a whole. Essential technology standards such as 5G and Wi-Fi, photo formats (JPEG), standards for audio and video compression and decompression (e.g. MPEG, HEVC) and more are covered by such patents. SEPS play a crucial role in developments such as the Internet of Things, Industry 4.0, connected vehicles, smart cities and climate change mitigation technologies. The number of SEPs has increased sixfold over the last ten years, which is good news, given that the protection of SEPs is key to enabling innovation that helps the EU to become more sustainable and more digital.
As early as November 2021, in its resolution on an intellectual property action plan to support the EU’s recovery and resilience (EP resolution on the intellectual property action plan), the European Parliament called for a European Commission proposal on SEPs, as SEPs are often the subject of litigation. The lack of transparency and legal certainty was identified as an issue. The licensing of SEPs is often a lengthy and costly exercise for both patent holders and technology implementers.
Ordinary patent holders are free to decide to whom they wish to grant a licence to exploit their innovation. However, SEP holders do not have this complete freedom, as the inclusion of their patented technology in a standard gives them some degree of market power. Therefore, SEP holders are obliged to grant their licences on fair, reasonable and non-discriminatory (FRAND) terms. These FRAND terms have led to a large number of problems, which have also been the subject of court proceedings.
On the one hand, it is near impossible for implementers to find out whether a standard is indeed essential, how many SEPs relate to a given standard, who the corresponding SEP holders are and what the ultimate costs to achieve market entry using the relevant standard will be. Around 84% of SEP implementers are SMEs. For them in particular, the mere threat of a provisional injunction leading to a suspension of production of allegedly infringing products and the probability of legal proceedings may create pressure to agree to a licence at rates that may not be FRAND.
On the other hand, the SEP holder cannot enforce his legitimate interests while the implementer insists on having a licence issued on FRAND terms, with the intention of putting off the obligation to pay royalties for as long as possible. As a result, SEP holders also face lengthy and costly court proceedings, with royalties only being paid at the end of this prolonged procedure.
In order to provide a better factual basis for preventing, resolving and deciding on conflicts relating to FRAND terms, on 27 April 2023, the European Commission submitted a proposal with the following new measures:
1. the establishment of an SEP register and a central electronic database for SEPs;
2. SEP essentiality checks;
3. non-binding determination of the aggregate royalty for a standard;
4. the establishment of a time-limited out-of-court dispute resolution mechanism under expert guidance that can be used by SEP holders and implementers when negotiating a FRAND licence.
In general, the rapporteur supports the Commission’s initiative and the proposed measures, as the Commission has acted in accordance with the EP resolution on the intellectual property action plan.
The rapporteur stresses the importance of increasing the proposal’s legal clarity and bridging the interests of SEP holders and implementers. Both actors play a huge role in the European economy and their interests must therefore be taken into account in the context of a well-balanced legislative act. The proposal must increase the transparency of SEPs in order to compensate for the knowledge advantage of SEP holders, yet without limiting their global competitiveness.
More legal clarity
Knowing which use cases of standards fall under the new legislation is massively important for legal clarity. While the rapporteur agrees that the Commission should address this issue through delegated acts, she believes it is crucial that certain criteria be established already now. For this reason, the rapporteur has proposed amendments to this effect, including a definition of ‘significant difficulties or inefficiencies’.
The rapporteur has also incorporated new definitions which make the text easier to understand.
Creation of a competence centre within the EUIPO and registration
The rapporteur considers that establishing a competence centre at the EUIPO is a sensible proposal, given that the European executive agency has a lot of experience in maintaining databases. It is important that this agency is equipped with sufficient staff and funds to carry out the new task efficiently.
Furthermore, the rapporteur notes the importance of clarifying the difference between the register and the database, of ensuring the accuracy of the register and of preventing potential red tape for SEP holders.
Patent Pools
The rapporteur is in favour of patent pools. If managed in a transparent manner, they provide great added value for SEP holders and implementers. It should however be ensured that this transparency is actually reflected in the information provided, including on the website. To support this, the rapporteur has put forward proposals to that effect.
Essentiality checks
In the EP resolution on an intellectual property action plan, the EP called for an independent, neutral and transparent system for third party essentiality checks. The rapporteur welcomes the fact that the European Commission has taken this on board and proposed a system for assessing the essentiality of patents.
It should be noted that evaluators and conciliators in the FRAND determination procedure should possess the necessary and highly specialised expertise and experience while also being independent and impartial.
In addition, evaluators should also be able to review prior essentiality checks if they have doubts as to their accuracy.
Determination of aggregate royalty
The non-binding determination of the aggregate royalty will help stakeholders to set efficient SEP rates.
The rapporteur believes that it should not be possible to unilaterally block this assessment and has therefore proposed amendments to this effect.
Time-limited out-of-court dispute resolution mechanism
In the EP resolution on an intellectual property action plan, the Commission was also asked to provide more clarity on various aspects of FRAND, and to consider possible incentives for more efficient SEP licensing negotiations and reducing litigation. It also took this request on board, proposing a non-binding dispute resolution system, which has the potential to eliminate strategic delays caused by market participants. The rapporteur welcomes the fact that, on the basis of a third party opinion, this market participant can be asked to provide a security in a very timely manner and realistic and effective in scale.
At the same time, the rapporteur believes that while proceedings are still ongoing, the parties should not yet be obliged to make a binding decision on whether or not they should comply with the outcome of the procedure. The parties should be able to make such a decision only after learning the outcome of the dispute resolution mechanism.
In addition, the rapporteur believes that parallel proceedings should only lead to the termination of the dispute resolution mechanism if the other party so wishes. This is to prevent the procedure from being stopped on account of legal action in a third country.
Micro and small and medium enterprises
In some future-oriented SEP sectors, such as the Internet of Things, 85% of companies are MSMEs. MSMEs usually have limited human and financial resources and therefore the rapporteur strengthens the Commission’s proposals in this regard. She proposes the establishment of a one-stop shop for MSMEs within the competence centre. MSMEs that are SEP implementers should be offered free information on what licences they need for their products or services and how to obtain them. MSMEs that are SEP holders should be offered free information on how to better identify potential licensees and how to effectively enforce their rights. However, this help should only benefit MSMEs whose business models are not solely based on asserting patents.
Assessment of the new instruments
These proposed instruments have the potential to make SEP licensing significantly more efficient. They can reduce inefficiencies and transaction costs in licensing, thereby facilitating licensing negotiations, speeding up their outcomes and reducing costly and laborious litigation procedures. This would make the EU single market a more attractive location for industry standard-setting innovation. However, as the proposed measures also have an impact at global level, the rapporteur believes that the impact on the competitiveness of European SEP holders at global level and on innovation in Europe should also be examined in more detail. If the outcome of this review indicates a negative impact, the Commission should propose appropriate amendments where necessary.
ANNEX: ENTITIES OR PERSONS FROM WHOM THE RAPPORTEUR HAS RECEIVED INPUT
Pursuant to Article 8 of Annex I to the Rules of Procedure, the rapporteur declares that she has received input from the following entities or persons in the preparation of the report, until the adoption thereof in committee:
| Entity and/or person |
| IP Europe |
| InterDigital |
| Fraunhofer Institut |
| European Patent Office |
| European Association of Automotive Suppliers |
| Philips |
| Nokia |
| Ericsson |
| ACT The App Association |
| Qualcomm |
| Apple |
| European Commission DG GROW |
| Xiaomi |
| Volkswagen |
| Audi |
| Tholos Foundation |
| Public Interest Patent Law Institute |
| OpenForum Europe |
| Fair Standards Alliance |
| European Automobile Manufacturers´Association |
| Bayerische Motoren Werke |
| CEN CENELEC |
| Business Europe |
| Eurocommerce |
| Marconi (Avanci platform) |
| Permanent Representation of Germany |
| Permanent Representation of Spain |
| Verband der deutschen Automobilindustrie |
| Continental |
| CISCO |
| 4IPCouncil |
| Ingenico |
| European association of smart energy solution providers |
| Fiorentini |
| DOLBY |
| Siemens |
| Bosch |
| TU München |
| Bosch |
| Bundesverband Deutscher Leasing-Unternehmen |
| Wirtschaftsrat der CDU |
| DELL |
| Permanent Representation of Finland |
The list above is drawn up under the exclusive responsibility of the rapporteur.
28.11.2023
OPINION OF THE COMMITTEE ON INTERNATIONAL TRADE
for the Committee on Legal Affairs
on the Proposal for a Regulation of the European Parliament and of the Council on Standard essential patents and amending Regulation (EU)2017/1001
(COM(2023)0232 – C90147/2023 – 2023\0133(COD))
Rapporteur for opinion: Danuta Maria Hübner
AMENDMENTS
The Committee on International Trade calls on the Committee on Legal Affairs, as the committee responsible, to take the following into account:
Amendment 1
Proposal for a regulation
Recital 2
| Text proposed by the Commission | Amendment |
| (2) This Regulation aims at improving the licensing of SEPs, by addressing the causes of inefficient licensing such as insufficient transparency with regard to SEPs, fair, reasonable and non-discriminatory (FRAND) terms and conditions and licensing in the value chain, and limited use of dispute resolution procedures for resolving FRAND disputes. All these together reduce the overall fairness and efficiency of the system and result in excess administrative and transactional costs. By improving the licensing of SEPs, the Regulation aims to incentivise participation by European firms in the standard development process and the broad implementation of such standardised technologies, particularly in Internet of Things (IoT) industries. Therefore, this Regulation pursues objectives that are complementary to, but different from that of protecting undistorted competition, guaranteed by Articles 101 and 102 TFEU. This Regulation should also be without prejudice to national competition rules. | (2) This Regulation aims at improving the licensing of SEPs, by addressing the causes of inefficient licensing such as insufficient transparency with regard to SEPs, fair, reasonable and non-discriminatory (FRAND) terms and conditions and licensing in the value chain, and limited use of dispute resolution procedures for resolving FRAND disputes. All these together reduce the overall fairness and efficiency of the system and result in excess administrative and transactional costs. By improving the licensing of SEPs, the Regulation aims to incentivise participation by European firms in the standard development process and the broad implementation of such standardised technologies, particularly in Internet of Things (IoT) industries. Therefore, this Regulation pursues objectives that are complementary to, but different from that of protecting undistorted competition, guaranteed by Articles 101 and 102 TFEU. This Regulation should also be without prejudice to national competition rules , as well as in line with the European Union’s commitment to promote a rule-based, multilateral trading system under the WTO. In particular, the measures introduced by this Regulation must be compliant with WTO rules and the TRIPS Agreement, and must take into account the possible response of the Union’s trade partners and ensure that the enforcement of the measure is not perceived as a unilateral protectionist measure. |
Amendment 2
Proposal for a regulation
Recital 3
| Text proposed by the Commission | Amendment |
| (3) SEPs are patents that protect technology that is incorporated in a standard. SEPs are ‘essential’ in the sense that implementation of the standard requires use of the inventions covered by SEPs. The success of a standard depends on its wide implementation and as such every stakeholder should be allowed to use a standard. To ensure wide implementation and accessibility of standards, standard development organisations demand the SEP holders that participate in standard development to commit to license those patents on FRAND terms and conditions to implementers that chose to use the standard. The FRAND commitment is a voluntary contractual commitment given by the SEP holder for the benefit of third parties, and it should be respected as such also by subsequent SEP holders. This Regulation should apply to patents that are essential to a standard that has been published by a standard development organisation, to which the SEP holder has made a commitment to license its SEPs on fair, reasonable and non-discriminatory (FRAND) terms and conditions and that is not subject to a royalty-free intellectual property policy, after the entry into force of this Regulation. | (3) SEPs are patents that protect technology that is incorporated in a standard. SEPs are ‘essential’ in the sense that implementation of the standard requires use of the inventions covered by SEPs. The success of a standard depends on its wide implementation and as such every stakeholder should be allowed to use a standard. To ensure wide implementation and accessibility of standards, standard development organisations demand the SEP holders that participate in standard development to commit to license those patents on FRAND terms and conditions to implementers that chose to use the standard. The FRAND commitment is a voluntary contractual commitment given by the SEP holder for the benefit of third parties, and it should be respected as such also by subsequent SEP holders. This Regulation should apply to patents in force within the European Union that are essential to a standard that has been published by a standard development organisation, to which the SEP holder has made a commitment to license its SEPs on fair, reasonable and non-discriminatory (FRAND) terms and conditions and that is not subject to a royalty-free intellectual property policy, after the entry into force of this Regulation. |
Amendment 3
Proposal for a regulation
Recital 4
| Text proposed by the Commission | Amendment |
| (4) There are well established commercial relationships and licensing practices for certain use cases of standards, such as the standards for wireless communications, with iterations over multiple generations leading to considerable mutual dependency and significant value visibly accruing to both SEP holders and implementers. There are other, typically more novel use cases – sometimes of the same standards or subsets thereof - with less mature markets, more diffuse and less consolidated implementer communities, for which unpredictability of royalty and other licensing conditions and the prospect of complex patent assessments and valuations and related litigation weigh more heavily on the incentives to deploy standardised technologies in innovative products. Therefore, in order to ensure a proportionate and well targeted response, certain procedures under this Regulation, namely the aggregate royalty determination and the compulsory FRAND determination prior to litigation, should not be applied to identified use cases of certain standards or parts thereof for which there is sufficient evidence that SEP licensing negotiations on FRAND terms do not give rise to significant difficulties or inefficiencies. | (4) There are well established commercial relationships and licensing practices for certain use cases of standards, such as the standards for wireless communications, with iterations over multiple generations leading to considerable mutual dependency and significant value visibly accruing to both SEP holders and implementers. There are other, typically more novel use cases – sometimes of the same standards or subsets thereof - with less mature markets, more diffuse and less consolidated implementer communities, for which unpredictability of royalty and other licensing conditions and the prospect of complex patent assessments and valuations and related litigation weigh more heavily on the incentives to deploy standardised technologies in innovative products. Therefore, in order to ensure a proportionate and well targeted response, the compulsory FRAND determination prior to litigation, should not be applied to identified use cases of certain standards or parts thereof for which there is sufficient evidence that SEP licensing negotiations on FRAND terms do not give rise to significant difficulties or inefficiencies. |
Amendment 4
Proposal for a regulation
Recital 5
| Text proposed by the Commission | Amendment |
| (5) Whereas transparency in SEP licensing should stimulate a balanced investment environment, along entire Single Market value chains, in particular for emerging technology use cases underpinning Union objectives of green, digital and resilient growth, the Regulation should also apply to standards or parts thereof, published before its entry into force where inefficiencies in the licensing of the relevant SEPs severely distort the functioning of the internal market. This is particularly relevant for market failures hindering investment in the Single Market, the roll-out of innovative technologies or the development of nascent technologies and emerging use cases. Therefore, taking into account those criteria, the Commission should determine by a delegated act the standards or parts thereof that have been published before the entry into force of this Regulation and the relevant use cases, for which SEPs can be registered. | deleted |
Amendment 5
Proposal for a regulation
Recital 8
| Text proposed by the Commission | Amendment |
| (8) In view of the global character of SEP licensing, references to aggregate royalty and FRAND determination may refer to global aggregate royalties and global FRAND determinations, or as otherwise agreed by the notifying stakeholders or the parties to the proceedings. | (8) In view of the global character of SEP licensing, references to and FRAND determination may refer to global FRAND determinations, or as otherwise agreed by the notifying stakeholders or the parties to the proceedings. |
Amendment 6
Proposal for a regulation
Recital 13
| Text proposed by the Commission | Amendment |
| (13) The competence centre should set up and administer an electronic register and an electronic database containing detailed information on SEPs in force in one or more Member States, including essentiality check results, opinions, reports, available case-law from jurisdictions across the globe, rules relating to SEPs in third countries, and results of studies specific to SEPs. In order to raise awareness and facilitate SEP licensing for SMEs, the competence centre should offer assistance to SMEs. The setting up and administering a system for essentiality checks and processes for aggregate royalty determination and FRAND determination by the competence centre should include actions improving the system and the processes on a continuous basis, including through the use of new technologies. In line with this objective, the competence centre should establish training procedures for evaluators of essentiality and conciliators for providing opinions on aggregate royalty as well as on FRAND determination and should encourage consistency in their practices. | (13) The competence centre should set up and administer an electronic register and an electronic database containing detailed information on SEPs in force in one or more Member States, including essentiality check results, opinions, reports, available case-law from jurisdictions across the globe, rules relating to SEPs in third countries, and results of studies specific to SEPs. In order to raise awareness and facilitate SEP licensing for SMEs, the competence centre should offer assistance to SMEs. The setting up and administering a system for essentiality checks and processes for FRAND determination by the competence centre should include actions improving the system and the processes on a continuous basis, including through the use of new technologies. In line with this objective, the competence centre should establish training procedures for evaluators of essentiality and conciliators for providing opinions on FRAND determination and should encourage consistency in their practices. |
Amendment 7
Proposal for a regulation
Recital 15
| Text proposed by the Commission | Amendment |
| (15) Knowledge of the potential total royalty for all SEPs covering a standard (aggregate royalty) applicable to the implementations of that standard is important for the assessment of the royalty amount for a product, which plays a significant role for the manufacturer’s cost determinations. It also helps SEP holder to plan expected return on investment. The publication of the expected aggregate royalty and the standard licensing terms and conditions for a particular standard would facilitate SEP licensing and reduce the cost of SEP licensing. Thus, it is necessary to make public the information on total royalty rates (aggregate royalty) and the standard FRAND terms and conditions of licensing. | deleted |
Amendment 8
Proposal for a regulation
Recital 16
| Text proposed by the Commission | Amendment |
| (16) SEP holders should have the opportunity to first inform the competence centre of the publication of the standard or the aggregate royalty which they have agreed upon among themselves. Except for those use cases of standards for which the Commission establishes that there are well established and broadly well-functioning licensing practices of SEPs, the competence centre may assist the parties in the relevant aggregate royalty determination. In this context, if there is no agreement on an aggregate royalty among SEP holders, certain SEP holders may request the competence centre to appoint a conciliator to assist the SEP holders willing to participate in the process in determining an aggregate royalty for the SEPs covering the relevant standard. In this case, the role of the conciliator would be to facilitate the decision-making by the participating SEP holders without making any recommendation for an aggregate royalty. Finally, it is important to ensure that there is a third independent party, an expert, that could recommend an aggregate royalty. Therefore, SEP holders and/or implementers should be able to request the competence centre for an expert opinion on an aggregate royalty. When such a request is made, the competence centre should appoint a panel of conciliators and administer a process in which all interested stakeholders are invited to participate. After receiving information from all of the participants, the panel should provide a non-binding expert opinion for an aggregate royalty. The expert opinion on the aggregate royalty should contain a non-confidential analysis of the expected impact of the aggregate royalty on the SEP holders and the stakeholders in the value chain. Important in this respect would be to consider factors such as, efficiency of SEP licensing, including insights from any customary rules or practices for licensing of intellectual property in the value chain and cross-licensing, and impact on incentives to innovate of SEP holders and different stakeholders in the value chain. | deleted |
Amendment 9
Proposal for a regulation
Recital 18
| Text proposed by the Commission | Amendment |
| (18) Once a standard has been notified or an aggregate royalty is specified, whichever is made first, the competence centre will open the registration of SEPs by holders of SEPs in force in one or more Member States. | (18) Once a standard has been notified, the competence centre will open the registration of SEPs by holders of SEPs in force in one or more Member States. |
Amendment 10
Proposal for a regulation
Recital 20
| Text proposed by the Commission | Amendment |
| (20) SEP holders may register after the indicated time limit. However, in that case, SEP holders should not be able to collect royalties and claim damages for the period of delay. | (20) In case of failure to register, the competence centre should notify the SEP holder that, in case of further delays in registering its patents, following a grace period of 2 months, the SEP holders would not be able to collect royalties and claim damages in relation to its patent, until the registration is completed. |
Amendment 11
Proposal for a regulation
Recital 22
| Text proposed by the Commission | Amendment |
| (22) SEP holders should ensure that their SEP registration(s) are updated. Updates should be registered within 6 months for relevant status changes, including ownership, invalidation findings or other applicable changes resulting from contractual commitments or public authorities’ decisions. Failure to update the registration may lead to the suspension of the registration of the SEP from the register. | (22) SEP holders should ensure that their SEP registration(s) are updated. Updates should be registered within 6 months for relevant status changes, including ownership, invalidation findings or other applicable changes resulting from contractual commitments or public authorities’ decisions. In case of failure to update the registration, the competence centre should notify the SEP holder that in case of further delays in updating its registration, following a grace period of 2 months, its SEP may be suspended. |
Amendment 12
Proposal for a regulation
Recital 26
| Text proposed by the Commission | Amendment |
| (26) SEP holders or implementers may also designate annually up to 100 registered SEPs for essentiality checks. If the pre-selected SEPs are confirmed essential, the SEP holders may use this information in negotiations and as evidence in courts, without prejudicing the right of an implementer to challenge the essentiality of a registered SEP in court. The selected SEPs would have no bearing on the sampling process as the sample should be selected from all registered SEPs of each SEP holder. If a preselected SEP and a SEP selected for the sample set are the same, only one essentiality check should be done. Essentiality checks should not be repeated on SEPs from the same patent family. | (26) If the pre-selected SEPs are confirmed essential, the SEP holders may use this information in negotiations and as evidence in courts, without prejudicing the right of an implementer to challenge the essentiality of a registered SEP in court. The selected SEPs would have no bearing on the sampling process as the sample should be selected from all registered SEPs of each SEP holder. If a preselected SEP and a SEP selected for the sample set are the same, only one essentiality check should be done. Essentiality checks should not be repeated on SEPs from the same patent family. |
Amendment 13
Proposal for a regulation
Recital 33
| Text proposed by the Commission | Amendment |
| (33) The FRAND determination would be a mandatory step before a SEP holder would be able to initiate patent infringement proceedings or an implementer could request a determination or assessment of FRAND terms and conditions concerning a SEP before a competent court of a Member State. However, the obligation to initiate FRAND determination before the relevant court proceedings should not be required for SEPs covering those use cases of standards for which the Commission establishes that there are no significant difficulties or inefficiencies in licensing on FRAND terms. | (33) Given that a properly functioning out-of-court dispute resolution mechanism to determine FRAND terms may offer significant benefits for all parties, and that at the same time the fundamental right of access to Court for all parties must be respected, the FRAND determination should be a mandatory step before a national competent Court proceeds with assessing the merit of a patent infringement claim, initiated by a SEP holder, or proceeds with the determination or assessment of FRAND terms and conditions, as requested by an implementer. |
Amendment 14
Proposal for a regulation
Recital 34
| Text proposed by the Commission | Amendment |
| (34) Each party may choose whether it wishes to engage in the procedure and commit to comply with its outcome. Where a party does not reply to the FRAND determination request or does not commit to comply with the outcome of the FRAND determination, the other party should be able to request either the termination or the unilateral continuation of the FRAND determination. Such a party should not be exposed to litigation during the time of the FRAND determination. At the same time, the FRAND determination should be an effective procedure for the parties to reach agreement before litigation or to obtain a determination to be used in further proceedings. Therefore, the party or parties that commit to complying with the outcome of the FRAND determination and duly engage in the procedure should be able to benefit from its completion. | (34) Each party may choose whether it wishes to engage in the procedure. Where a party does not reply to the FRAND determination request, the other party should be able to request either the termination or the unilateral continuation of the FRAND determination. Such a party should not be exposed to litigation during the time of the FRAND determination. At the same time, the FRAND determination should be an effective procedure for the parties to reach agreement before litigation or to obtain a determination to be used in further proceedings. |
Amendment 15
Proposal for a regulation
Recital 35
| Text proposed by the Commission | Amendment |
| (35) The obligation to initiate FRAND determination should not be detrimental to the effective protection of the parties’ rights. In that respect, the party that commits to comply with the outcome of the FRAND determination while the other party fails to do so should be entitled to initiate proceedings before the competent national court pending the FRAND determination. In addition, either party should be able to request a provisional injunctionof a financial nature before the competent court. In a situation where a FRAND commitment has been given by the relevant SEP holder, provisional injunctions of an adequate and proportionate financial nature should provide the necessary judicial protection to the SEP holder who has agreed to license its SEP on FRAND terms, while the implementer should be able to contest the level of FRAND royalties or raise a defence of lack of essentiality or of invalidity of the SEP. In those national systems that require the initiation of the proceedings on the merits of the case as a condition to request the interim measures of a financial nature, it should be possible to initiate such proceedings, but the parties should request that the case be suspended during the FRAND determination. When determining what level of the provisional injunction of financial nature is to be deemed adequate in a given case, account should be taken, inter alia, of the economic capacity of the applicant and the potential effects for the effectiveness of the measures applied for, in particular for SMEs, also in order to prevent the abusive use of such measures. It should also be clarified that once the FRAND determination is terminated, the whole range of measures, including provisional, precautionary and corrective measures, should be available to parties. | (35) The obligation to initiate FRAND determination should not be detrimental to the effective protection of the parties’ rights. Either party should be able to request a provisional injunctionof a financial nature before the competent court. In a situation where a FRAND commitment has been given by the relevant SEP holder, provisional injunctions of an adequate and proportionate financial nature should provide the necessary judicial protection to the SEP holder who has agreed to license its SEP on FRAND terms, while the implementer should be able to contest the level of FRAND royalties or raise a defence of lack of essentiality or of invalidity of the SEP. In those national systems that require the initiation of the proceedings on the merits of the case as a condition to request the interim measures of a financial nature, it should be possible to initiate such proceedings, but the parties should request that the case be suspended during the FRAND determination. When determining what level of the provisional injunction of financial nature is to be deemed adequate in a given case, account should be taken, inter alia, of the economic capacity of the applicant and the potential effects for the effectiveness of the measures applied for, in particular for SMEs, also in order to prevent the abusive use of such measures. It should also be clarified that once the FRAND determination is terminated, the whole range of measures, including provisional, precautionary and corrective measures, should be available to parties. |
Amendment 16
Proposal for a regulation
Recital 36
| Text proposed by the Commission | Amendment |
| (36) When the parties enter into the FRAND determination, they should select a conciliator for the FRAND determination from the roster. In case of disagreement, the competence centre would select the conciliator. The FRAND determination should be concluded within 9 months. This time would be necessary for a procedure that ensures that the rights of the parties are respected and at the same time is sufficiently swift to avoid delays in concluding licences. Parties may settle at any time during the process, which results in the termination of the FRAND determination. | (36) When the parties enter into the FRAND determination, they should select a panel of conciliators for the FRAND determination from the roster. The panel should be composed of three conciliators, one selected by the SEP holder and one selected by the implementer from the roster of conciliators made available by the competence centre. The third conciliator should be mutually agreed upon by both parties. In case of disagreement, the competence centre would select the conciliator. The FRAND determination should be concluded within 9 months. This time would be necessary for a procedure that ensures that the rights of the parties are respected and at the same time is sufficiently swift to avoid delays in concluding licences. Parties may settle at any time during the process, which results in the termination of the FRAND determination. |
| (The change from ‘conciliator’ to ‘panel of conciliators’ should be done consistently throughout the Commission proposal, where appropriate) |
Amendment 17
Proposal for a regulation
Recital 40
| Text proposed by the Commission | Amendment |
| (40) If a party initiates a procedure in a jurisdiction outside the Union resulting in legally binding and enforceable decisions regarding the same standard that is subject to FRAND determination and its implementation, or including SEPs from the same patent family as SEPs subject to FRAND determination and involving one or more of the parties to the FRAND determination as a party; before or during of the FRAND determination by a party, the conciliator, or where he/she has not been appointed has not been established, the competence centre, should be able to terminate the procedure upon the request of the other party. | (40) If a party initiates a procedure in a jurisdiction outside the Union resulting in legally binding and enforceable decisions regarding the same standard that is subject to FRAND determination and its implementation, or including SEPs from the same patent family as SEPs subject to FRAND determination and involving one or more of the parties to the FRAND determination as a party; before or during of the FRAND determination, the panel of conciliators, or where they have not been appointed, the competence centre, should be able to terminate the procedure upon the request of any party. |
Amendment 18
Proposal for a regulation
Recital 44
| Text proposed by the Commission | Amendment |
| (44) When determining the aggregate royalties and making FRAND determinations the conciliators should take into account in particular any Union acquis and judgments of the Court of Justice pertaining to SEPs as well as guidance issued under this Regulation, the Horizontal Guidelines42 and the Commission’s 2017 Communication ‘Setting out the EU approach to Standard Essential Patents’.43 Furthermore, the conciliators should consider any expert opinion on the aggregate royalty or in the absence thereof, should request information from the parties before it makes its final proposals well as guidance issued under this Regulation, as well as guidance issued under this Regulation. | (44) When making FRAND determinations, the conciliators should take into account, in particular, any Union acquis and judgments of the Court of Justice pertaining to SEPs, as well as guidance issued under this Regulation, the Horizontal Guidelines42 and the Commission’s 2017 Communication ‘Setting out the EU approach to Standard Essential Patents’.43 Furthermore, the panel of conciliators should consider any expert opinion on FRAND determination or in the absence thereof, should request information from the parties before it makes its final proposals well as guidance issued under this Regulation, as well as guidance issued under this Regulation. |
| __________________ | __________________ |
| 42 Communication from the Commission – Guidelines on the applicability of Article 101 of the Treaty on the Functioning of the European Union to horizontal co-operation agreements, OJ C 11, 14.01.2011, pp. 1 (currently under review) | 42 Communication from the Commission – Guidelines on the applicability of Article 101 of the Treaty on the Functioning of the European Union to horizontal co-operation agreements, OJ C 11, 14.01.2011, pp. 1 (currently under review) |
| 43 Communication on Setting out the EU approach to Standard Essential Patents, COM(2017)712 final, 29.11.2017. | 43 Communication on Setting out the EU approach to Standard Essential Patents, COM(2017)712 final, 29.11.2017. |
Amendment 19
Proposal for a regulation
Recital 45
| Text proposed by the Commission | Amendment |
| (45) SEP licensing may cause friction in the value chains that have so far not been exposed to SEPs. It is, therefore, important that the competence centre raises awareness concerning SEP licensing in the value chain through any of the tools at its disposal. Other factors would include the ability of upstream manufacturers to pass the cost of a SEP licence downstream and any potential impact of existing indemnification clauses within a value chain. | (45) SEP licensing may cause friction in the value chains that have so far not been exposed to SEPs. It is, therefore, important that the competence centre raises awareness concerning SEP licensing in the value chain through any of the tools at its disposal, including through meaningful engagement of stakeholders. The competence centre should also, where appropriate, engage in knowledge exchange with relevant actors in the value chain. Other factors would include the ability of upstream manufacturers to pass the cost of a SEP licence downstream and any potential impact of existing indemnification clauses within a value chain. The competence centre should actively collect feedback provided by stakeholders in and outside the EU on challenges in complying with the Regulation, collect information regarding circumvention, and regarding impact on end-users. The competence centre should also contribute to ensure that the new EU licensing rules and their implementation do not undermine the EU innovation and technological leadership. |
Amendment 20
Proposal for a regulation
Recital 46
| Text proposed by the Commission | Amendment |
| (46) SMEs may be involved in SEP licensing both as SEP holders and implementers. While there are currently a few SME SEP holders, the efficiencies produced with this Regulation are likely to facilitate the licensing of their SEP. Additional conditions are necessary to relieve the cost burden on such SMEs such as reduced administration fees and potentially reduced fees for essentiality checks and conciliation in addition to free support and trainings. The SEPs of micro and small enterprises should not be the subject of sampling for essentiality check, but they should be able to propose SEPs for essentiality checks if they wish to. SME implementers should likewise benefit from reduced access fees and free support and trainings. Finally, SEP holders should be encouraged to incentivise licensing by SMEs through low volume discounts or exemptions from FRAND royalties. | (46) SMEs may be involved in SEP licensing both as SEP holders and implementers. While there are currently a few SME SEP holders, the efficiencies produced with this Regulation should also facilitate the licensing of their SEP to ensure a fair return on their investment and encourage SME participation in standards development. Additional conditions are necessary to relieve the cost burden on such SMEs such as reduced administration burden, administration fees and potentially reduced fees for essentiality checks and conciliation in addition to free support and trainings. The SEPs of micro and small enterprises should not be the subject of sampling for essentiality check. SME implementers should likewise benefit from reduced access fees and free support and trainings. Finally, SEP holders should be encouraged to incentivise licensing by SMEs through low volume discounts or exemptions from FRAND royalties. |
Amendment 21
Proposal for a regulation
Recital 47
| Text proposed by the Commission | Amendment |
| (47) In order to supplement certain non-essential elements of this Regulation, the power to adopt acts, in accordance with Article 290 of the Treaty on the Functioning of the European Union, should be delegated to the Commission in respect of the items to be entered in the register or in respect of determining the relevant existing standards or to identify use cases of standards or parts thereof for which the Commission establishes that there are no significant difficulties or inefficiencies in licensing on FRAND terms. It is of particular importance that the Commission carry out appropriate consultations during its preparatory work, including at expert level, and that those consultations be conducted in accordance with the principles laid down in the Interinstitutional Agreement of 13 April 2016 on Better Law-Making44 . In particular, to ensure equal participation in the preparation of delegated acts, the European Parliament and the Council receive all documents at the same time as Member States’ experts, and their experts systematically have access to meetings of Commission expert groups dealing with the preparation of delegated acts. | (47) In order to supplement certain non-essential elements of this Regulation, the power to adopt acts, in accordance with Article 290 of the Treaty on the Functioning of the European Union, should be delegated to the Commission to identify use cases of standards or parts thereof for which the Commission establishes that there are no significant difficulties or inefficiencies in licensing on FRAND terms. It is of particular importance that the Commission carry out appropriate consultations during its preparatory work, including at expert level, and that those consultations be conducted in accordance with the principles laid down in the Interinstitutional Agreement of 13 April 2016 on Better Law-Making44 . In particular, to ensure equal participation in the preparation of delegated acts, the European Parliament and the Council receive all documents at the same time as Member States’ experts, and their experts systematically have access to meetings of Commission expert groups dealing with the preparation of delegated acts. |
| __________________ | __________________ |
| 44 OJ L 123, 12.5.2016, p. 1. | 44 OJ L 123, 12.5.2016, p. 1. |
Amendment 22
Proposal for a regulation
Recital 48
| Text proposed by the Commission | Amendment |
| (48) In order to ensure uniform conditions for the implementation of the relevant provisions of this Regulation, implementing powers should be conferred on the Commission to adopt the detailed requirements for the selection of evaluators and conciliators, as well as adopt the rules of procedure and Code of Conduct for evaluators and conciliators. The Commission should also adopt the technical rules for the selection of a sample of SEPs for essentiality checks and the methodology for the conduct of such essentiality checks by evaluators and peer evaluators. The Commission should also determine any administrative fees for its services in relation to the tasks under this Regulation and fees for the services evaluators, experts and conciliators, derogations thereof and payment methods and adapt them as necessary. The Commission should also determine the standards or parts thereof that have been published before the entry into force of this Regulation, for which SEPs can be registered. Those powers should be exercised in accordance with Regulation (EU) No 182/2011 of the European Parliament and of the Council.45 | (48) In order to ensure uniform conditions for the implementation of the relevant provisions of this Regulation, implementing powers should be conferred on the Commission to adopt the detailed requirements for the selection of evaluators and conciliators, as well as adopt the rules of procedure and Code of Conduct for evaluators and conciliators. The Commission should also adopt the technical rules for the selection of a sample of SEPs for essentiality checks and the methodology for the conduct of such essentiality checks by evaluators and peer evaluators. The Commission should also determine any administrative fees for its services in relation to the tasks under this Regulation and fees for the services evaluators, experts and conciliators, derogations thereof and payment methods and adapt them as necessary. Those powers should be exercised in accordance with Regulation (EU) No 182/2011 of the European Parliament and of the Council.45 |
| __________________ | __________________ |
| 45 Regulation (EU) No 182/2011 of the European Parliament and of the Council laying down the rules and general principles concerning mechanisms for control by the Member States of the Commission’s exercise of implementing powers (OJ L 55, 28.2.2011, p. 13.) | 45 Regulation (EU) No 182/2011 of the European Parliament and of the Council laying down the rules and general principles concerning mechanisms for control by the Member States of the Commission’s exercise of implementing powers (OJ L 55, 28.2.2011, p. 13.) |
Amendment 23
Proposal for a regulation
Recital 49
| Text proposed by the Commission | Amendment |
| (49) Regulation (EU) 2017/1001 of the European Parliament and of the Council46 should be amended to empower EUIPO to take on the tasks under this Regulation. The functions of the Executive Director should also be expanded to include the powers conferred on him under this Regulation. Furthermore, the EUIPO’s arbitration and mediation centre should be empowered to set up processes such as the aggregate royalty determination and the FRAND determination. | (49) Regulation (EU) 2017/1001 of the European Parliament and of the Council46 should be amended to empower EUIPO to take on the tasks under this Regulation. The functions of the Executive Director should also be expanded to include the powers conferred on him under this Regulation. Furthermore, the EUIPO’s arbitration and mediation centre should be empowered to set up processes such as the FRAND determination. |
| __________________ | __________________ |
| 46 Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ L 154, 16.6.2017, p. 1.) | 46 Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ L 154, 16.6.2017, p. 1.) |
Amendment 24
Proposal for a regulation
Article 1 – paragraph 2
| Text proposed by the Commission | Amendment |
| 2. This Regulation shall apply to patents that are essential to a standard that has been published by a standard development organisation, to which the SEP holder has made a commitment to license its SEPs on fair, reasonable and non-discriminatory (FRAND) terms and conditions and that is not subject to a royalty-free intellectual property policy, | 2. This Regulation shall only apply to patents : |
| (a) after the entry into force of this Regulation, with the exceptions provided in paragraph 3; | (a) that are in force in one or more Member States; |
| (b) before the entry into force of this Regulation, in accordance with Article 66. | (b) that are essential to a standard that has been published by a standard development organisation after the entry into force of this Regulation; and |
| (c) to which the SEP holder has made a commitment to license its SEPs on fair, reasonable and non-discriminatory (FRAND) terms and conditions and that is not subject to a royalty-free, or equivalent, intellectual property policy |
Amendment 25
Proposal for a regulation
Article 1 – paragraph 3
| Text proposed by the Commission | Amendment |
| 3. Articles 17 and 18 and Article 34(1) shall not apply to SEPs to the extent that they are implemented for use cases identified by the Commission in accordance with paragraph 4. | 3. Article 34(1) shall not apply to SEPs to the extent that they are implemented for use cases identified by the Commission in accordance with paragraph 4. |
Amendment 26
Proposal for a regulation
Article 1 – paragraph 4
| Text proposed by the Commission | Amendment |
| 4. Where there is sufficient evidence that, as regards identified use cases of certain standards or parts thereof, SEP licensing negotiations on FRAND terms do not give rise to significant difficulties or inefficiencies affecting the functioning of the internal market, the Commission shall, after an appropriate consultation process, by means of a delegated act pursuant to Article 67, establish a list of such use cases, standards or parts thereof, for the purposes of paragraph 3. | 4. Where there is sufficient evidence that, as regards identified use cases of certain standards or parts thereof, SEP licensing negotiations on FRAND terms do not give rise to significant difficulties or inefficiencies affecting the functioning of the internal market, the Commission shall, by [18 months after the entry into force of this Regulation], and after an appropriate consultation process, by means of a delegated act pursuant to Article 67, establish a list of such use cases, standards or parts thereof, for the purposes of paragraph 3. |
Amendment 27
Proposal for a regulation
Article 1 – paragraph 5
| Text proposed by the Commission | Amendment |
| 5. This Regulation shall apply to holders of SEP in force in one or more Member States. | deleted |
Amendment 28
Proposal for a regulation
Article 2 – paragraph 1 – point 1
| Text proposed by the Commission | Amendment |
| (1) ‘standard essential patent’ or ‘SEP’ means any patent that is essential to a standard; | (1) ‘standard essential patent’ or ‘SEP’ means any patent that is in force in one or more Member States, that is essential to a standard, and for which the SEP holder has made a commitment to license its SEP on FRAND terms and conditions; |
Amendment 29
Proposal for a regulation
Article 2 – paragraph 1 – point 7
| Text proposed by the Commission | Amendment |
| (7) ‘implementer’ means a natural or legal person that implements, or intends to implement, a standard in a product, process, service or system; | (7) ‘implementer’ means a natural or legal person that implements, or intends to implement, a standard in a product, process, service or system in one or more Member States; |
Amendment 30
Proposal for a regulation
Article 2 – paragraph 1 – point 10
| Text proposed by the Commission | Amendment |
| (10) ‘aggregate royalty’ means the maximum amount of royalty for all patents essential to a standard; | deleted |
Amendment 31
Proposal for a regulation
Article 2 – paragraph 1 – point 16
| Text proposed by the Commission | Amendment |
| (16) ‘patent family’ means a collection of patent documents that cover the same invention and whose members have the same priorities; | (16) ‘patent family’ means a collection of patent applications covering the same or similar technical content and related to each other through priority claims. |
Amendment 32
Proposal for a regulation
Article 3 – paragraph 2 – point f
| Text proposed by the Commission | Amendment |
| (f) administer a process for aggregate royalty determination; | deleted |
Amendment 33
Proposal for a regulation
Article 3 – paragraph 3
| Text proposed by the Commission | Amendment |
| 3. Using the powers conferred by Article 157 of Regulation (EU) 2017/1001, the Executive Director of the EUIPO shall adopt the internal administrative instructions and shall publish the notices that are necessary for the fulfilment of all the tasks entrusted to the competence centre by this Regulation. | 3. The competence centre shall be set up and fully functional 24 months after the entry into force of this Regulation, and it shall ensure that it regularly exchanges information with regional and global IP organisations. Using the powers conferred by Article 157 of Regulation (EU) 2017/1001, the Executive Director of the EUIPO shall adopt the internal administrative instructions and shall publish the notices that are necessary for the fulfilment of all the tasks entrusted to the competence centre by this Regulation. |
Amendment 34
Proposal for a regulation
Article 4 – paragraph 4 – point c
| Text proposed by the Commission | Amendment |
| (c) information on whether an essentiality check or peer evaluation have been performed and reference to the result; | (c) information on whether an essentiality check or peer evaluation have been performed, unless not possible due to contractual restraints agreed upon by the parties, and reference to the result; |
Amendment 35
Proposal for a regulation
Article 4 – paragraph 4 – point f
| Text proposed by the Commission | Amendment |
| (f) date of publication of information pursuant to Article 19(1) in conjunction with Article 14(7), Article 15(4) and Article 18(11); | (f) date of publication of information pursuant to Article 19(1) in conjunction with Article 14(7); |
Amendment 36
Proposal for a regulation
Article 5 – paragraph 2 – point d
| Text proposed by the Commission | Amendment |
| (d) information regarding known products, processes, services or systems and implementations pursuant to Article 7, first paragraph, point (b); | (d) information regarding known products, processes, services or systems and implementations pursuant to Article 7; |
Amendment 37
Proposal for a regulation
Article 5 – paragraph 2 – point g
| Text proposed by the Commission | Amendment |
| (g) information on aggregate royalties pursuant to Articles 15, 16 and 17; | deleted |
Amendment 38
Proposal for a regulation
Article 5 – paragraph 2 – point h
| Text proposed by the Commission | Amendment |
| (h) expert opinions referred to in Article 18; | deleted |
Amendment 39
Proposal for a Regulation
Article 6 – paragraph 1
| Text proposed by the Commission | Amendment |
| 1. When a party requests that data and documents of the database be kept confidential, that party shall provide a non-confidential version of the information submitted in confidence in sufficient detail to permit a reasonable understanding of the substance of the information submitted in confidence. The competence centre may disclose that non-confidential version. | 1. When a party requests that data and documents of the database be kept confidential, that party shall, so far as reasonably possible, provide a non-confidential version of the information submitted in confidence in sufficient detail to permit a reasonable understanding of the substance of the information submitted in confidence. The competence centre may disclose that non-confidential version. |
Justification
Data expressed by numerical values such as royalty rates, product volumes, etc cannot be reduced to a non-confidential form.
Amendment 40
Proposal for a regulation
Article 7 – paragraph 1 a (new)
| Text proposed by the Commission | Amendment |
| (1a) Implementers shall provide to the competence centre information as regards the products, processes, services or systems available in the Union market that they provide or intend to provide that are compliant with a standard published by a standard development organization that requires a FRAND commitment, identifying the standard concerned. |
Amendment 41
Proposal for a regulation
Article 8
| Text proposed by the Commission | Amendment |
| A SEP holder shall provide to the competence centre the following information to be included in the database and referenced in the register: | A SEP holder shall provide to the competence centre information on a final decision on essentiality for a registered SEP made by a competent court of a Member State within 6 months from the publication of such decision. Such information shall be included in the database and referenced in the register without undue delay. |
| (a) a final decision on essentiality for a registered SEP made by a competent court of a Member State within 6 months from the publication of such decision. | |
| (b) any essentiality check prior to [OJ: please insert the date = 24 months from entry into force of this regulation] by an independent evaluator in the context of a pool, identifying the SEP registration number, the identity of the patent pool and its administrator, and the evaluator. |
Amendment 42
Proposal for a regulation
Article 12 – paragraph 1
| Text proposed by the Commission | Amendment |
| 1. The competence centre shall collect and publish in the database information on any SEP related rules in any third country. | 1. The competence centre shall collect and promptly publish in the database, after having it duly veryified, information on any SEP related rules in any third country. The competence centre shall also collect information on compliance and circumvention of this Regulation in or by third countries, as well as monitoring the impact on end-users. |
Amendment 43
Proposal for a regulation
Article 12 – paragraph 2 a (new)
| Text proposed by the Commission | Amendment |
| 2 a. In order to facilitate effective implementation of this Regulation, the competence centre may cooperate, engage and exchange information with, amongst others, authorities of third countries and international organisations dealing with SEPs, in particular as regards the information on SEP related rules in third countries or the prevention of parallel proceedings. |
Amendment 44
Proposal for a regulation
Article 15
| Text proposed by the Commission | Amendment |
| Article 15 | deleted |
| Notification of an aggregate royalty to the competence centre | |
| 1. Holders of SEPs in force in one or more Member States for which FRAND commitments have been made may jointly notify the competence centre the aggregate royalty for the SEPs covering a standard. | |
| 2. The notification made in accordance with paragraph (1) shall contain the information on the following: | |
| (a) the commercial name of the standard; | |
| (b) the list of technical specifications that define the standard; | |
| (c) the names of the SEP holders making the notification referred to in paragraph (1); | |
| (d) the estimated percentage the SEP holders referred to in paragraph (1) represent from all SEP holders; | |
| (e) the estimated percentage of SEPs they own collectively from all SEPs for the standard; | |
| (f) the implementations known to the SEP holders referred to in point (c); | |
| (g) the global aggregate royalty, unless the notifying parties specify that the aggregate royalty is not global; | |
| (h) any period for which the aggregate royalty referred to in paragraph (1) is valid. | |
| 3. The notification referred to in paragraph (1) shall be made at the latest 120 days after: | |
| (a) the publication of a standard by the standard development organisation for implementations known to the SEP holders referred to in paragraph (2), point (c); or | |
| (b) a new implementation of the standard becomes known to them. | |
| 4. The competence centre shall publish in the database the information provided under paragraph (2). | |
| Any reference to ‘aggregate royalty’ should be taken out throughout the Commission proposal. |
Amendment 45
Proposal for a regulation
Article 16
| Text proposed by the Commission | Amendment |
| Article 16 | deleted |
| Revision of aggregate royalty | |
| 1. In case of revision of the aggregate royalty, the SEP holders shall notify the competence centre about the revised aggregate royalty and the reasons for the revision. | |
| 2. The competence centre shall publish in the database the initial aggregate royalty, the revised aggregate royalty and the reasons for the revision in the register. |
Amendment 46
Proposal for a regulation
Article 17
| Text proposed by the Commission | Amendment |
| Article 17 | deleted |
| Process for facilitating agreements on aggregate royalty determinations | |
| 1. Holders of SEPs in force in one or more Member States representing at least 20 % of all SEPs of a standard may request the competence centre to appoint a conciliator from the roster of conciliators to mediate the discussions for a joint submission of an aggregate royalty. | |
| 2. Such a request shall be made no later than 90 days following the publication of the standard or no later than 120 days following the first sale of new implementation on the Union market for implementations not known at the time of publication of the standard. | |
| 3. The request shall contain the following information: | |
| (a) the commercial name of the standard; | |
| (b) the date of publication of the latest technical specification or the date of the first sale of new implementation on the Union market; | |
| (c) the implementations known to the SEP holders referred to in paragraph (1); | |
| (d) the names and contact details of the SEP holders supporting the request; | |
| (e) the estimated percentage of SEPs they own individually and collectively from all potential SEPs claimed for the standard. | |
| 4. The competence centre shall notify the SEP holders referred to in paragraph (3), point (d) and request them to express their interest in participating in the process and to provide their estimated percentage of SEPs from all SEPs for the standard. | |
| 5. The competence centre shall appoint a conciliator from the roster of conciliators and inform all SEP holders that expressed interest to participate in the process. | |
| 6. SEP holders that submit to the conciliator confidential information shall provide a non-confidential version of the information submitted in confidence in sufficient detail to permit a reasonable understanding of the substance of the information submitted in confidence. | |
| 7. Where the SEP holders fail to make a joint notification within 6 months from the appointment of the conciliator, the conciliator shall terminate the process. | |
| 8. If the contributors agree on a joint notification, the procedure set out in Article 15(1), (2) and (4) shall apply. |
Amendment 47
Proposal for a regulation
Article 18
| Text proposed by the Commission | Amendment |
| [...] | deleted |
Amendment 48
Proposal for a regulation
Article 19 – paragraph 1
| Text proposed by the Commission | Amendment |
| 1. The competence centre shall create an entry in the register for a standard for which FRAND commitments have been made within 60 days from the earliest of the following events: | 1. The competence centre shall create an entry in the register for a standard for which FRAND commitments have been made within 60 days from the publication by the competence centre of the standard and related information pursuant to Article 14(7). |
| (a) publication by the competence centre of the standard and related information pursuant to Article 14(7); | |
| (b) publication by the competence centre of an aggregate royalty and related information pursuant to Article 15(4) and Article 18(11). |
Amendment 49
Proposal for a regulation
Article 19 – paragraph 2
| Text proposed by the Commission | Amendment |
| 2. The competence centre shall publish a notice on the EUIPO website informing stakeholders that an entry in the register has been made and refer to the publications referred to in paragraph (1). The competence centre shall notify known SEP holders individually by electronic means and the relevant standard development organisation of the notice in this paragraph. | 2. The competence centre shall publish a notice on the EUIPO website informing stakeholders that an entry in the register has been made. The competence centre shall notify known SEP holders individually by electronic means and the relevant standard development organisation of the notice in this paragraph. |
Amendment 50
Proposal for a regulation
Article 22 – paragraph 3
| Text proposed by the Commission | Amendment |
| 3. Where the registration does not contain the information in accordance with Articles 4 and 5 or contains incomplete or inaccurate information, the competence centre shall request the SEP holder to provide the complete and accurate information within the set time limit of no less than 2 months. | 3. Where the registration does not contain the information in accordance with Articles 4 and 5 or contains incomplete or inaccurate information, the competence centre shall request the SEP holder to provide the complete and accurate information within the set time limit of no less than 6 months. |
Amendment 51
Proposal for a regulation
Article 22 – paragraph 4
| Text proposed by the Commission | Amendment |
| 4. If the SEP holder fails to provide the correct and complete information, the registration shall be suspended from the register, until such time as the incompleteness or inaccuracy is remedied. | 4. If the SEP holder fails to provide the correct and complete information, the competence centre shall notify the SEP holder about its failure to provide the correct and complete information and that, following a grace period of 2 months during which the SEP holder could still provide the required information, its registration shall be suspended from the register , until such time as the incompleteness or inaccuracy is remedied. |
Amendment 52
Proposal for a regulation
Article 23 – paragraph 3
| Text proposed by the Commission | Amendment |
| 3. The competence centre shall notify the request to the SEP holder and invite the SEP holder to correct the entry in the register or the information submitted for the database, where relevant within a time limit no less than 2 months. | 3. The competence centre shall notify the request to the SEP holder and invite the SEP holder to correct the entry in the register or the information submitted for the database, where relevant within a time limit no less than 6 months. |
Amendment 53
Proposal for a regulation
Article 23 – paragraph 4 – introductory part
| Text proposed by the Commission | Amendment |
| 4. The competence centre shall notify the SEP holder and invite the SEP holder to correct the entry in the register or the information submitted for the database, where relevant within a time limit no less than 2 months, when the competence centre is informed by a competent court of a Member State pursuant to Article 10(1) or a patent office or any third party of: | 4. The competence centre shall notify the SEP holder and invite the SEP holder to correct the entry in the register or the information submitted for the database, where relevant within a time limit no less than 6 months, when the competence centre is informed by a competent court of a Member State pursuant to Article 10(1) or a patent office or any third party of: |
Amendment 54
Proposal for a regulation
Article 23 – paragraph 5
| Text proposed by the Commission | Amendment |
| 5. If the SEP holder fails to correct the entry in the register or the information submitted for the database within the given time limit, the registration shall be suspended from the register, until such time as the incompleteness or inaccuracy is remedied. | 5. If the SEP holder fails to correct the entry in the register or the information submitted for the database within the given time limit, the competence centre shall notify the SEP holder about its failure to correct the entry and that, following a grace period of 2 months during which the SEP holder could still provide the required information, the registration shall be suspended from the register, until such time as the incompleteness or inaccuracy is remedied. |
Amendment 55
Proposal for a regulation
Article 26 – paragraph 2
| Text proposed by the Commission | Amendment |
| 2. A conciliator shall conduct the following tasks: | 2. A conciliator shall serve in a FRAND determination. |
| (a) mediate among parties in establishing an aggregate royalty; | |
| (b) provide a non-binding opinion on an aggregate royalty ; | |
| (c) serve in a FRAND determination. |
Amendment 56
Proposal for a regulation
Article 26 – paragraph 5 – introductory part
| Text proposed by the Commission | Amendment |
| 5. By [OJ: please insert the date = 18 months from entry into force of this regulation], the Commission shall by means of an implementing act adopted in accordance with the examination procedure referred to in , lay down the practical and operational arrangements concerning: | 5. By [OJ: please insert the date = 18 months from entry into force of this regulation], the Commission shall by means of an implementing act adopted in accordance with the examination procedure referred to in Article 68(2), lay down the practical and operational arrangements concerning: |
Amendment 57
Proposal for a regulation
Article 26 – paragraph 5 – point b
| Text proposed by the Commission | Amendment |
| (b) the procedures pursuant to Articles 17, 18, 31 and 32 and Title VI. | (b) the procedures pursuant to Articles 31 and 32 and Title VI. |
Amendment 58
Proposal for a regulation
Article 27 – paragraph 2
| Text proposed by the Commission | Amendment |
| 2. The competence centre shall establish a roster of suitable candidates for evaluators or conciliators. There may be different rosters of evaluators and conciliators depending on the technical area of their specialisation or expertise. | 2. The competence centre shall establish a roster of suitable candidates for evaluators or conciliators. There shall be different rosters of evaluators and conciliators depending on the technical area of their specialisation or expertise. |
Amendment 59
Proposal for a regulation
Article 29 – paragraph 5
| Text proposed by the Commission | Amendment |
| 5. Each SEP holder may voluntarily propose annually up to 100 registered SEPs from different patent families to be checked for essentiality with regard to each specific standard for which SEP registration was made. | deleted |
Amendment 60
Proposal for a regulation
Article 29 – paragraph 6
| Text proposed by the Commission | Amendment |
| 6. Any implementer may voluntarily propose annually up to 100 registered SEPs from different patent families to be checked for essentiality with regard to each specific standard for which SEP registrations have been made. | deleted |
Amendment 61
Proposal for a regulation
Article 36 – paragraph 1 – point d
| Text proposed by the Commission | Amendment |
| (d) the commercial name of the standard and the name of the standard developing organisation. | (d) the commercial name of the standard and the name of the relevant standard developing organisation. |
Amendment 62
Proposal for a regulation
Article 36 – paragraph 1 – point f
| Text proposed by the Commission | Amendment |
| (f) references to any other FRAND determination, if applicable. | (f) references to any other related FRAND determination, if applicable. |
Amendment 63
Proposal for a regulation
Article 37 – paragraph 2
| Text proposed by the Commission | Amendment |
| 2. The period for the time barring of claims before a competent court of a Member State shall be suspended for the duration of the FRAND determination. | deleted |
Amendment 64
Proposal for a regulation
Article 38 – paragraph 2
| Text proposed by the Commission | Amendment |
| 2. The responding party shall notify the competence centre within 15 days from the receipt of the notification of the request for FRAND determination from the competence centre in accordance with paragraph (1). The response shall indicate whether the responding party agrees to the FRAND determination and whether it commits to comply with its outcome. | 2. The responding party shall notify the competence centre within 15 days from the receipt of the notification of the request for FRAND determination from the competence centre in accordance with paragraph (1). The response shall indicate whether the responding party agrees to the FRAND determination and, in case of disagreement, include the reasons for declining participation. |
Amendment 65
Proposal for a regulation
Article 38 – paragraph 3 – introductory part
| Text proposed by the Commission | Amendment |
| 3. Where the responding party does not reply within the time limit laid down in paragraph (2) or informs the competence centre of its decision not to participate in the FRAND determination, or not to commit to comply with the outcome, the following shall apply: | 3. Where the responding party does not reply within the time limit laid down in paragraph (2) or informs the competence centre of its decision not to participate in the FRAND determination, the following shall apply: |
Amendment 66
Proposal for a regulation
Article 38 – paragraph 3 – point a
| Text proposed by the Commission | Amendment |
| (a) the competence centre shall notify the requesting party thereof and invite it to indicate within seven days whether it requests the continuation of the FRAND determination and whether it commits to comply with the outcome of the FRAND determination; | (a) the competence centre shall notify the requesting party thereof and invite it to indicate within seven days whether it requests the continuation of the FRAND determination; |
Amendment 67
Proposal for a regulation
Article 38 – paragraph 3 – point b
| Text proposed by the Commission | Amendment |
| (b) where the requesting party requests the continuation of the FRAND determination and commits to its outcome, the FRAND determination shall continue, but Article 34(1) shall not apply to the court proceedings for the requesting party in relation to the same subject matter. | (b) where the requesting party requests the continuation of the FRAND determination, the FRAND determination shall continue, but Article 34(1) shall not apply to the court proceedings for the requesting party in relation to the same subject matter. |
Amendment 68
Proposal for a regulation
Article 38 – paragraph 4 – introductory part
| Text proposed by the Commission | Amendment |
| 4. Where the responding party agrees to the FRAND determination and commits to comply with its outcome pursuant to paragraph (2), including where such commitment is contingent upon the commitment of the requesting party to comply with the outcome of the FRAND determination, the following shall apply: | 4. Where the responding party agrees to the FRAND determination pursuant to paragraph (2), the following shall apply: |
Amendment 69
Proposal for a regulation
Article 38 – paragraph 4 – point a
| Text proposed by the Commission | Amendment |
| (a) the competence centre shall notify the requesting party thereof and request to inform the competence centre within seven days whether it also commits to comply with the outcome of the FRAND determination. In case of acceptance of the commitment by the requesting party, the FRAND determination shall continue and the outcome shall be binding for both parties; | (a) the competence centre shall notify the requesting party thereof and request to inform the competence centre within seven days; |
Amendment 70
Proposal for a regulation
Article 38 – paragraph 4 – point b
| Text proposed by the Commission | Amendment |
| (b) where the requesting party does not reply within the time limit referred to in subparagraph (a) or informs the competence centre of its decision not to commit to comply with outcome of the FRAND determination, the competence centre shall notify the responding party and invite it to indicate within seven days whether it requests the continuation of the FRAND determination. | (b) where the requesting party does not reply within the time limit referred to in subparagraph (a), the competence centre shall notify the responding party and invite it to indicate within seven days whether it requests the continuation of the FRAND determination. |
Amendment 71
Proposal for a regulation
Article 38 – paragraph 4 a (new)
| Text proposed by the Commission | Amendment |
| 4 a. Both parties may declare a commitment to comply with the outcome of the FRAND determination at any time during the process. The commitment may be unilateral or contigent upon the other party’s agreement. The commitment shall have no impact on the outcome or continuation of the FRAND determination process. |
Amendment 72
Proposal for a regulation
Article 38 – paragraph 5
| Text proposed by the Commission | Amendment |
| 5. Where either party commits to comply with the outcome of the FRAND determination, while the other party fails to do so within the applicable time limits, the competence centre shall adopt a notice of commitment to the FRAND determination and notify the parties within 5 days from the expiry of the time-limit to provide the commitment. The notice of commitment shall include the names of the parties, the subject-matter of the FRAND determination, a summary of the procedure and information on the commitment provided or on the failure to provide commitment for each party. | 5. Where either party commits to comply with the outcome of the FRAND determination, the competence centre shall adopt a notice of commitment to the FRAND determination and notify the parties within 5 days from the expiry of the time-limit to provide the commitment. The notice of commitment shall include the names of the parties, the subject-matter of the FRAND determination, a summary of the procedure and information on the commitment provided or on the failure to provide commitment for each party. |
Amendment 73
Proposal for a regulation
Article 39
| Text proposed by the Commission | Amendment |
| Selection of conciliators | Selection of the panel of conciliators |
| 1. Following the reply to the FRAND determination by the responding party in accordance with Article 38(2), or the request to continue in accordance with Article 38(5), the competence centre shall propose at least 3 candidates for the FRAND determination from the roster of conciliators referred to Article 27(2). The parties or party shall select one of the proposed candidates as a conciliator for the FRAND determination. | 1. Following the continuation of the FRAND determination by the responding party in accordance with Article 38(2), or the request to continue in accordance with Article 38(5), the requesting and responding parties shall each nominate one conciliator from the roster of conciliators referred to in Article 27(2) to the panel of conciliators. Both conciliators shall jointly agree on one further conciliator for the FRAND determination from the roster of conciliators referred to in Article 27(2). |
| 2. If the parties do not agree on a conciliator, the competence centre shall select one candidate from the roster of conciliators referred to in Article 27(2). | 2. If the two conciliators nominated by the parties do not agree on the third conciliator, the competence centre shall select one candidate from the roster of conciliators referred to in Article 27(2). |
Amendment 74
Proposal for a regulation
Article 42 – paragraph 1
| Text proposed by the Commission | Amendment |
| 1. After the case is referred to the conciliator in accordance with Article 40(2), he/she shall examine whether the request contains the information required under Article 36 in accordance with the Rules of procedure. | 1. After the case is referred to the panel of conciliators in accordance with Article 40(2), they shall examine whether the request contains the information required under Article 36 in accordance with the Rules of procedure. |
Amendment 75
Proposal for a regulation
Article 42 – paragraph 2
| Text proposed by the Commission | Amendment |
| 2. He/she shall communicate to the parties or the party requesting the continuation of the FRAND determination the conduct as well as the schedule of procedure. | 2. They shall communicate to the parties or the party requesting the continuation of the FRAND determination the conduct as well as the schedule of procedure. |
Amendment 76
Proposal for a regulation
Article 44 – paragraph 1
| Text proposed by the Commission | Amendment |
| 1. A party may submit an objection stating that the conciliator is unable to make a FRAND determination on legal grounds, such as a previous binding FRAND determination or agreement between the parties, no later than in the first written submission. The other party shall be given opportunity to submit its observations. | 1. A party may submit an objection stating that the panel of conciliators is unable to make a FRAND determination on legal grounds, such as a previous binding FRAND determination or agreement between the parties, at any time. The other party shall be given opportunity to submit its observations. |
Amendment 77
Proposal for a regulation
Article 44 – paragraph 2
| Text proposed by the Commission | Amendment |
| 2. The conciliator shall decide on the objection and either reject it as unfounded before considering the merits of the case or join it to the examination of the merits of the FRAND determination. If the conciliator overrules the objection or joins it to the examination of the merits of the determination of FRAND terms and conditions, it shall resume consideration of the determination of FRAND terms and conditions. | 2. The panel of conciliators shall decide on the objection and either reject it as unfounded before considering the merits of the case or join it to the examination of the merits of the FRAND determination. If the panel of conciliators overrules the objection or joins it to the examination of the merits of the determination of FRAND terms and conditions, it shall resume consideration of the determination of FRAND terms and conditions. |
Amendment 78
Proposal for a regulation
Article 44 – paragraph 3
| Text proposed by the Commission | Amendment |
| 3. If the conciliator decides that the objection is founded, it shall terminate the FRAND determination and shall draw up a report stating the reasons of the decision. | 3. If the panel of conciliators decides that the objection is founded, it shall terminate the FRAND determination and shall draw up a report stating the reasons of the decision. |
Amendment 79
Proposal for a regulation
Article 45 – paragraph 1
| Text proposed by the Commission | Amendment |
| 1. The conciliator shall assist the parties in an independent and impartial manner in their endeavour to reach a determination of FRAND terms and conditions. | 1. The panel of conciliators shall assist the parties in an independent and impartial manner in their endeavour to reach a determination of FRAND terms and conditions. |
Amendment 80
Proposal for a regulation
Article 45 – paragraph 2
| Text proposed by the Commission | Amendment |
| 2. The conciliator may invite the parties or the party requesting the continuation of the FRAND determination to meet with him/her or may communicate with him/her orally or in writing. | 2. The panel of conciliators may invite the parties or the party requesting the continuation of the FRAND determination to meet with them or may communicate with them orally or in writing. |
Amendment 81
Proposal for a regulation
Article 45 – paragraph 3
| Text proposed by the Commission | Amendment |
| 3. The parties or the party requesting the continuation of the FRAND determination shall cooperate in good faith with the conciliator and, in particular, shall attend the meetings, comply with his/her requests to submit all relevant documents, information and explanations as well as use the means at their disposal to enable the conciliator to hear witnesses and experts whom the conciliator might call. | 3. The parties or the party requesting the continuation of the FRAND determination shall cooperate in good faith with the panel of conciliators and, in particular, shall attend the meetings, comply with their requests to submit all relevant documents, information and explanations as well as use the means at their disposal to enable the conciliator to hear witnesses and experts whom the conciliator might call. |
Amendment 82
Proposal for a regulation
Article 45 – paragraph 5
| Text proposed by the Commission | Amendment |
| 5. At any stage of the procedure upon request by both parties, or the party requesting the continuation of the FRAND determination, as applicable, the conciliator shall terminate the FRAND determination. | 5. At any stage of the procedure upon request by both parties, or the party requesting the continuation of the FRAND determination, as applicable, the panel of conciliators shall terminate the FRAND determination. |
Amendment 83
Proposal for a regulation
Article 46 – paragraph 1 – point a
| Text proposed by the Commission | Amendment |
| (a) fails to comply with any request of the conciliator, Rules of procedure or schedule of procedure referred to in Article 42(2), | (a) fails to comply with any request of the panel of conciliators, Rules of procedure or schedule of procedure referred to in Article 42(2), |
Amendment 84
Proposal for a regulation
Article 46 – paragraph 1 – point b
| Text proposed by the Commission | Amendment |
| (b) withdraws its commitment to comply with the outcome of the FRAND determination as set out in Art. 38, or | deleted |
Amendment 85
Proposal for a regulation
Article 46 – paragraph 1 – subparagraph 2
| Text proposed by the Commission | Amendment |
| the conciliator shall inform both parties thereof. | the panel of conciliators shall inform both parties thereof. |
Amendment 86
Proposal for a regulation
Article 46 – paragraph 2 – introductory part
| Text proposed by the Commission | Amendment |
| 2. Having received the notification of the conciliator, the complying party may ask the conciliator to take one of the following actions: | 2. Having received the notification of the panel of conciliators, the complying party may ask the panel of conciliators to take one of the following actions: |
Amendment 87
Proposal for a regulation
Article 47 – paragraph 2
| Text proposed by the Commission | Amendment |
| 2. Where a parallel proceeding has been initiated before or during the FRAND determination by a party, the conciliator, or where he/she has not been appointed, the competence centre, shall terminate the FRAND determination upon the request of any other party. | 2. Where a parallel proceeding has been initiated before or during the FRAND determination by a party, the conciliator, or where they have not been appointed, the competence centre, shall terminate the FRAND determination upon the request of any party. |
Amendment 88
Proposal for a regulation
Article 50 – paragraph 1
| Text proposed by the Commission | Amendment |
| 1. At any time during the FRAND determination, the conciliator or a party on its own motion or by invitation of the conciliator may submit proposals for a determination of FRAND terms and conditions | 1. At any time during the FRAND determination, the panel of conciliators or a party on its own motion or by invitation of the panel of conciliators may submit proposals for a determination of FRAND terms and conditions |
Amendment 89
Proposal for a regulation
Article 50 – paragraph 3
| Text proposed by the Commission | Amendment |
| 3. When submitting suggestions for FRAND terms and conditions, the conciliator shall take into account the impact of the determination FRAND terms and conditions on the value chain and on the incentives to innovation of both the SEP holder and the stakeholders in the relevant value chain. To that end, the conciliator may rely on the expert opinion referred to in Article 18 or, in case of absence of such an opinion request additional information and hear experts or stakeholders. | 3. When submitting suggestions for FRAND terms and conditions, the panel of conciliators shall take into account the impact of the determination FRAND terms and conditions on the value chain and on the incentives to innovation of both the SEP holder and the stakeholders in the relevant value chain. To that end, the panel of conciliators may request additional information and hear experts or stakeholders. |
Amendment 90
Proposal for a regulation
Article 55 – paragraph 1
| Text proposed by the Commission | Amendment |
| 1. At the latest 45 days before the end of the time limit referred to in Article 37, the conciliator shall submit a reasoned proposal for a determination of FRAND terms and conditions to the parties or, as applicable, the party requesting the continuation of the FRAND determination. | 1. At the latest 45 days before the end of the time limit referred to in Article 37, the panel of conciliators shall submit a reasoned proposal for a determination of FRAND terms and conditions to the parties or, as applicable, the party requesting the continuation of the FRAND determination. |
Amendment 91
Proposal for a regulation
Article 55 – paragraph 2
| Text proposed by the Commission | Amendment |
| 2. Either party may submit observations to the proposal and suggest amendments to the proposal by the conciliator, who may reformulate its proposal to take into account the observations submitted by the parties and shall inform the parties or the party requesting the continuation of the FRAND determination, as applicable, of such reformulation. | 2. Either party may submit observations to the proposal and suggest amendments to the proposal by the panel of conciliators, who may reformulate its proposal to take into account the observations submitted by the parties and shall inform the parties or the party requesting the continuation of the FRAND determination, as applicable, of such reformulation. |
Amendment 92
Proposal for a regulation
Article 56 – paragraph 1 – point b
| Text proposed by the Commission | Amendment |
| (b) a written declaration is signed by the parties accepting the reasoned proposal for a determination of FRAND terms and conditions by the conciliator referred to in Article 55; | (b) a written declaration is signed by the parties accepting the reasoned proposal for a determination of FRAND terms and conditions by the panel of conciliators referred to in Article 55; |
Amendment 93
Proposal for a regulation
Article 56 – paragraph 1 – point c
| Text proposed by the Commission | Amendment |
| (c) a written declaration is made by a party not to accept the reasoned proposal of a determination of FRAND terms and conditions by the conciliator referred to in Article 55; | (c) a written declaration is made by a party not to accept the reasoned proposal of a determination of FRAND terms and conditions by the panel of conciliators referred to in Article 55; |
Amendment 94
Proposal for a regulation
Article 56 – paragraph 1 – point d
| Text proposed by the Commission | Amendment |
| (d) a party has not submitted a reply to the reasoned proposal of a determination of FRAND terms and conditions by the conciliator referred to in Article 55. | (d) a party has not submitted a reply to the reasoned proposal of a determination of FRAND terms and conditions by the panel of conciliators referred to in Article 55. |
Amendment 95
Proposal for a regulation
Article 56 – paragraph 1 – point d a (new)
| Text proposed by the Commission | Amendment |
| (d a) a binding FRAND determination agreed between the parties pursuant to Article 38(4) shall terminate when the conciliator makes its final reasoned proposal under Article 55. |
Amendment 96
Proposal for a regulation
Article 61
| Text proposed by the Commission | Amendment |
| Training, advice and support | Training, advice and support |
| 1. The competence centre shall offer training and support on SEP related matters for micro, small and medium-size enterprises free of charge. | 1. The competence centre shall offer training and support on SEP related matters for micro, small and medium-size enterprises free of charge. |
| In particular, the competence centre shall work in close cooperation with the European Commission, national patent offices and governmental schemes that support SMEs, in order to offer practical guidance and advice to SMEs, whether these are SEP holders or implementers. The competence centre shall also regularly seeks input from SMEs on what training and support the competence centre should offer to them, as well as what studies in accordance with paragraph 2 would be most helpful to them. | |
| 2. The competence centre may commission studies, if it considers it necessary, to assist micro, small and medium-size enterprises on SEP related matters. | 2. The competence centre may commission studies, if it considers it necessary, to assist micro, small and medium-size enterprises on SEP related matters. Such studies may include requiring SEP holders and implementers to provide information regarding licenses entered into, royalties paid or collected, and products sold for IoT applications. The competence centre may provide to SMEs estimates of licensing costs for such applications. |
| 2a. The competence center shall require each SEP holder with a Registered SEP to report annually: | |
| (a) all license agreements concluded with SMEs; | |
| (b) all SMEs that sent it unsolicited requests it for an SEP license; and | |
| (c) all SMEs to which it specifically directed a request to take an SEP license. | |
| The competence center shall publish an annual report on SME SEP Licensing based on such reports. | |
| 2b. The competence centre shall invite SEP holders with a Registered SEP to identify an employee to the competence center, known as an “SME Ambassador,” to whom the competence center may direct inquiries under paragraphs 1 to 3. SEP holders may identify an SME Ambassador on a voluntary basis. | |
| 3. The costs of the services referred to in paragraph (1) and paragraph 2 shall be borne by the EUIPO. | 3. The costs of the services referred to in paragraph (1) to (2b) shall be borne by the EUIPO. The EUIPO shall ensure that this function is sufficiently funded and resourced. |
Amendment 97
Proposal for a regulation
Article 63 – paragraph 2 – point a
| Text proposed by the Commission | Amendment |
| (a) for the conciliators facilitating agreements on aggregate royalty determinations in accordance with Article 17; | deleted |
Amendment 98
Proposal for a regulation
Article 63 – paragraph 2 – point b
| Text proposed by the Commission | Amendment |
| (b) for the expert opinion on aggregate royalty in accordance with Article 18; | deleted |
Amendment 99
Proposal for a regulation
Article 63 – paragraph 3 – point a
| Text proposed by the Commission | Amendment |
| (a) the fees referred to in paragraph (2), point (a) by the SEP holders that participated in the process based on their estimated percentage of SEPs from all SEPs for the standard; | deleted |
Amendment 100
Proposal for a regulation
Article 63 – paragraph 3 – point b
| Text proposed by the Commission | Amendment |
| (b) the fees referred to in paragraph (2), point (b) equally by the parties that participated in the procedure of the expert opinion on aggregate royalty, unless they agree otherwise, or the panel suggests a different apportionment based on the size of the parties determined on the basis of their turnover; | deleted |
Amendment 101
Proposal for a regulation
Article 64 – paragraph 2
| Text proposed by the Commission | Amendment |
| 2. If the amounts requested are not paid in full within 10 days after the date of the request, the competence centre may notify the defaulting party and give it the opportunity to make the required payment within [5] days. It shall submit a copy of the request to the other party, in case of an aggregate royalty or FRAND determination. | 2. If the amounts requested are not paid in full within 10 days after the date of the request, the competence centre may notify the defaulting party and give it the opportunity to make the required payment within [5] days. It shall submit a copy of the request to the other party, in case of FRAND determination. |
Amendment 102
Proposal for a regulation
Article 66
| Text proposed by the Commission | Amendment |
| Article 66 | deleted |
| Opening registration for an existing standard | |
| 1. Until [OJ: please insert the date = 28 months from the entry into force of this regulation] holders of SEPs essential to a standard published before the entry into force of this Regulation (‘existing standards’), for which FRAND commitments have been made, may notify the competence centre pursuant to Articles 14, 15 and 17 of any of the existing standards or parts thereof that will be determined in the delegated act in accordance with paragraph (4). The procedures, notification and publication requirements set out in this Regulation apply mutatis mutandis. | |
| 2. Until [OJ: please insert the date = 28 months from entry into force of this regulation] implementers of a standard, standard published before the entry into force of this Regulation, for which FRAND commitments have been made may notify pursuant to Article 14(4) the competence centre of any of the existing standards or parts thereof, that will be determined in the delegated act in accordance with paragraph (4). The procedures, notification and publication requirements set out in this Regulation apply mutatis mutandis. | |
| 3. Until [OJ: please insert the date = 30 months from entry into force of this regulation] a SEP holder or an implementer may request an expert opinion pursuant to Article 18 regarding SEPs essential to an existing standard or parts thereof, that will be determined in the delegated act in accordance with paragraph (4). The requirements and procedures set out in Article 18 apply mutatis mutandis. | |
| 4. Where the functioning of the internal market is severely distorted due to inefficiencies in the licensing of SEPs, the Commission shall, after an appropriate consultation process, by means of a delegated act pursuant to Article 67, determine which of the existing standards, parts thereof or relevant use cases can be notified in accordance with paragraph (1) or paragraph (2), or for which an expert opinion can be requested in accordance with paragraph (3). The delegated act shall also determine which procedures, notification and publication requirements set out in this Regulation apply to those existing standards. The delegated act shall be adopted within [OJ: please insert the date = 18 months from entry into force of this regulation]. | |
| 5. This article shall apply without prejudice to any acts concluded and rights acquired by [OJ: please insert the date = 28 months from entry into force of this regulation]. |
Amendment 103
Proposal for a regulation
Article 68 – paragraph 2
| Text proposed by the Commission | Amendment |
| 2. Where reference is made to this paragraph, Article 5 of Regulation (EU) No 182/2011 shall apply. | 2. Where reference is made to this paragraph, Article 5 of Regulation (EU) No 182/2011 shall apply. In accordance with Article 5(4)(b) of that Regulation, where no committee opinion is delivered, the Commission shall not adopt the draft implementing act. |
Amendment 104
Proposal for a regulation
Article 70 – paragraph 1
| Text proposed by the Commission | Amendment |
| 1. By [OJ: please insert the date = 5 years from entry into force of this regulation] the Commission shall evaluate the effectiveness and efficiency of the SEP registration and the essentiality check system. | 1. By [6 months after the entry into force of this Regulation, the Commission shall set up an expert stakeholder group, comprised of independent external experts and a balanced representation of all interested parties, including SEP holders and implementers and SMEs. The expert stakeholder group shall be tasked with assessing the impact of this Regulation on the European and global IP and innovation ecosystem and on the European competitiveness, as well as the compatibiltiy of this Regulation with the WTO agreements. The expert stakeholder group shall formulate its assessment and its recommendation in a report to the Commission no later than [12 monts after the entry into force of this Regulation], and every three years thereafter. That report shall also be made public. |
Amendment 105
Proposal for a regulation
Article 70 – paragraph 1 a (new)
| Text proposed by the Commission | Amendment |
| 1 a. By [OJ: please insert the date = 18 months from entry into force of this regulation], and every three years thereafter, the Commission shall review the application, enforcement and impact of this Regulation and present a report to the European Parliament and the Council. In its evaluation, the Commission shall adopt a global perspective when assessing the effectiveness and efficiency of measures impacting EU companies' innovation capacity. It shall also consider global competitiveness, document instances of circumvention and impact on end-users. In drafting its report, the Commission shall take into consideration the assessment and recommendations of the expert stakeholder group as referred to in paragraph 1a, and shall consult the EUIPO, EPO, the World Intellectual Property Organisation and other global stakeholders, including third country governments. The Commission report as referred to in the first subparagraph, shall in particular assess the following issues: a) the effectiveness of this Regulation in achieving its intended goal of increasing transparency and, in particular, the impact, effectiveness and efficiency of the competence centre and its working methods; b) the cost-benefit to SEP holders and implementers of this Regulation; c) the overall impact on the IP and innovation ecosystem in Europe and globally; d) the impact of this regulation on SMEs and micro enterprises; e) the impact on trade and on the competitiveness of the Union’s industry; g) the impact in terms of administrative burdens for the economic operators; and h) whether the regulation goes against WTO compatibility and TRIPS. Where the Commission considers it appropriate, the report shall be accompanied by relevant legislative proposals or repeal the existing regulation. |
Amendment 106
Proposal for a regulation
Article 70 – paragraph 2
| Text proposed by the Commission | Amendment |
| 2. By [OJ: please insert the date = 8 years from entry into force of this regulation], and every five years thereafter, the Commission shall evaluate the implementation of this Regulation. The evaluation shall assess the operation of this Regulation, in particular the impact, effectiveness and efficiency of the competence centre and its working methods. | deleted |
Amendment 107
Proposal for a regulation
Article 70 – paragraph 3
| Text proposed by the Commission | Amendment |
| 3. When preparing the evaluation reports referred to in paragraphs (1) and (2), the Commission shall consult the EUIPO and stakeholders. | deleted |
Amendment 108
Proposal for a regulation
Article 70 – paragraph 4
| Text proposed by the Commission | Amendment |
| 4. The Commission shall submit the evaluation reports referred to in paragraphs (1) and (2) together with its conclusions drawn based on those reports to the European Parliament, to the Council, to the European Economic and Social Committee and to the Management Board of the EUIPO. | deleted |
Amendment 109
Proposal for a regulation
Article 72 – paragraph 2
| Text proposed by the Commission | Amendment |
| 2. It shall apply from … [OP: please insert the date = 24 months after the date of entry into force of this Regulation]. | 2. It shall apply from … [OP: please insert the date = 36 months after the date of entry into force of this Regulation]. |
Amendment 110
Proposal for a regulation
Article 72 – paragraph 2 a (new)
| Text proposed by the Commission | Amendment |
| 2 a. By way of derogation from paragraph 2, Article 3 shall apply from the date of entry into force of this Regulation, to the extent it is necessary for the establishment of the competence centre. |
ANNEX: ENTITIES OR PERSONS FROM WHOM THE RAPPORTEUR HAS RECEIVED INPUT
Pursuant to Article 8 of Annex I to the Rules of Procedure, the rapporteur declares that she has received input from the following entities or persons in the preparation of the opinion, until the adoption thereof in committee:
| Entity and/or person |
| 41Pcouncil |
| ACEA |
| ACT The App Association |
| Continental |
| DOLBY |
| Ericsson |
| European Association of Automotive Suppliers (CLEPA) |
| European Association of Smart Energy Solution Providers (ESMIG) |
| European Commission DG Grow, Unit of Intangible Economy |
| European Commission DG Trade, Unit for Investment and Intellectual Property |
| European Patent Office, President's Office |
| Fair Standards Alliance |
| Fraunhofer Institut |
| Ingenico |
| InterDigital |
| IP Europe |
| Marconi (Avanci platform) |
| Nokia |
| Phillips |
| Qualcomm |
| Xiaomi |
The list above is drawn up under the exclusive responsibility of the rapporteur.
SHORT JUSTIFICATION
IMCO fully supports the objective of the draft proposal to improve the licensing of standard essential patents (SEPs). Such improvement aligns with our European goals of fostering innovation, enhancing the digital transition, and ensuring that Europe is a frontrunner in new technologies, thereby encouraging the voluntary participation of European businesses in the European standardization process and ensuring the broadest possible implementation of standardized technologies.
SEPs play a pivotal role in the broader objectives of achieving a seamless single market and ensuring Europe's global competitiveness. Their central role in promoting technological innovation aligns with the emphasis on socio-economic recovery and encourages businesses to invest in the research and development of new technologies, which benefits our entire economy. At the same time we should ensure that SMEs, crucial for the Single Market, are not left behind in the technological race, that access to these technologies remains fair, and that patent holders do not abuse their power to hinder competition.
Given this broader context, which underscores the importance of integrating technology, innovation, and fair competition within the European -technological landscape, it is clear that standard essential patents (SEPs) are vital in achieving these goals. The proposal's overarching objective, which is to streamline and improve the licensing of SEPs, is certainly commendable in light of these ambitions. It aligns with the larger vision of fostering a more cohesive, innovative, and competitive European Union. However, while its intentions are in the right direction, specific areas within the proposal need closer examination.
First, the scope of the Regulation should include all SEPs, present and future. Without such inclusivity, the benefits of transparency and reduced litigation will not be fully realized. They will continue to be subject to the issues this regulation seeks to address, including protracted litigation over the appropriate FRAND values for these SEPs. It is, therefore, imperative to extend the scope of application to all SEPs.
Existing SEPs should be allowed to be registered to ensure that legacy technologies remain both accessible and competitive. The current agreement should still be enforceable even if an existing SEP is not registered. It is only upon submission to the register that all related rules should apply. Consequently, Article 24 of the proposal should be revised to eliminate penalties associated with non-registration of these SEPs.
Second, both SEP holders and implementers should be able to request checks and determinations, and they should be able to do so with a lower threshold, particularly for SME implementers.
In keeping our commitment to transparency and inclusivity, the SEP information database must be accessible to all. While it is understandable to impose fees for specialized checks—like determining a patent's essentiality or FRAND value - the overarching costs for the database's upkeep should fall to the EUIPO. This ensures that a diverse group, from researchers to the general public, can access the information without bearing the financial burden. However, in case of certain type of information in the database, like non-confidential information on FRAND determinations, expert opinions referred to in Article 18 or non-confidential reports of the conciliators, access to it may be subject to the payment of a fee where justified.
Lastly, the draft opinion introduces technical corrections and clarifications to the proposal. In addition to correcting the terminology, this involves clarifying that the mechanisms to determine a SEP's FRAND value and essentiality are separate from the standardization process itself.
AMENDMENTS
The Committee on the Internal Market and Consumer Protection calls on the Committee on Legal Affairs, as the committee responsible, to take the following into account:
Amendment 1
Proposal for a regulation
Recital 3
| Text proposed by the Commission | Amendment |
| (3) SEPs are patents that protect technology that is incorporated in a standard. SEPs are ‘essential’ in the sense that implementation of the standard requires use of the inventions covered by SEPs. The success of a standard depends on its wide implementation and as such every stakeholder should be allowed to use a standard. To ensure wide implementation and accessibility of standards, standard development organisations demand the SEP holders that participate in standard development to commit to license those patents on FRAND terms and conditions to implementers that chose to use the standard. The FRAND commitment is a voluntary contractual commitment given by the SEP holder for the benefit of third parties, and it should be respected as such also by subsequent SEP holders. This Regulation should apply to patents that are essential to a standard that has been published by a standard development organisation, to which the SEP holder has made a commitment to license its SEPs on fair, reasonable and non-discriminatory (FRAND) terms and conditions and that is not subject to a royalty-free intellectual property policy, after the entry into force of this Regulation. | (3) SEPs are patents that protect any technology that is involved in the use of a standard. SEPs are ‘essential’ in the sense that implementation of the standard requires is reported to require use of the inventions covered by SEPs. The success of a standard depends on its wide implementation and as such every stakeholder should be allowed to use a standard. To ensure wide implementation and accessibility of standards, standard development organisations should only proceed with the publication of a standard development to if the identified patent holders commit to license those patents on FRAND terms and conditions to implementers that chose to use the standard. The FRAND commitment is a voluntary contractual commitment given by the SEP holder for the benefit of third parties, and it should be respected as such also by subsequent SEP holders. The FRAND commitment should therefore not cease to apply in the event of a change in SEPs ownership so that even if the current SEP holder did not initially make the commitment, the SEP Regulation still applies to patents for which the FRAND terms was made previously. This Regulation should apply to patents in force in one or more Member States and have been declared essential to a standard that has been published by a standard development organisation, to which the SEP holder or a previous holder of the SEPs in question has made a commitment to license its SEPs on FRAND terms and conditions and that are not subject to a royalty-free intellectual property policy. |
Amendment 2
Proposal for a regulation
Recital 4
| Text proposed by the Commission | Amendment |
| (4) There are well established commercial relationships and licensing practices for certain use cases of standards, such as the standards for wireless communications, with iterations over multiple generations leading to considerable mutual dependency and significant value visibly accruing to both SEP holders and implementers. There are other, typically more novel use cases – sometimes of the same standards or subsets thereof - with less mature markets, more diffuse and less consolidated implementer communities, for which unpredictability of royalty and other licensing conditions and the prospect of complex patent assessments and valuations and related litigation weigh more heavily on the incentives to deploy standardised technologies in innovative products. Therefore, in order to ensure a proportionate and well targeted response, certain procedures under this Regulation, namely the aggregate royalty determination and the compulsory FRAND determination prior to litigation, should not be applied to identified use cases of certain standards or parts thereof for which there is sufficient evidence that SEP licensing negotiations on FRAND terms do not give rise to significant difficulties or inefficiencies. | deleted |
Amendment 3
Proposal for a regulation
Recital 5
| Text proposed by the Commission | Amendment |
| (5) Whereas transparency in SEP licensing should stimulate a balanced investment environment, along entire Single Market value chains, in particular for emerging technology use cases underpinning Union objectives of green, digital and resilient growth, the Regulation should also apply to standards or parts thereof, published before its entry into force where inefficiencies in the licensing of the relevant SEPs severely distort the functioning of the internal market. This is particularly relevant for market failures hindering investment in the Single Market, the roll-out of innovative technologies or the development of nascent technologies and emerging use cases. Therefore, taking into account those criteria, the Commission should determine by a delegated act the standards or parts thereof that have been published before the entry into force of this Regulation and the relevant use cases, for which SEPs can be registered. | (5) Whereas transparency in SEP licensing should stimulate a balanced investment environment, along entire Single Market value chains, in particular for emerging technology underpinning Union objectives of green, digital and resilient growth, the Regulation should also apply to standards or parts thereof, published before its entry into force if any implementer and any holder of a SEP declared to be essential to a standard that has been published before the entry into force of this Regulation, notifies it to the competence centre. The inclusion of these standards, such as those regarding Long Term Evolution (LTE), may be of particular importance to the roll-out of new technologies, including the Internet of Things (IoT), and will help to avoid distortions of the functioning of the internal market. This is particularly relevant for transparency purposes and the need to diminish the risk of market failures hindering investment in the Single Market, the roll-out of innovative technologies or the development of technologies. The exceptions to the exclusive rights of SEP holders are thus consistent with the objectives of the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs) to promote technological innovation and the dissemination of technology to the mutual advantage of the SEP holder and the user of the technology. It would also be consistent with its principles of preventing the abuse of intellectual property rights and adopting measures for public interest reasons. In particular, Article 30 of the TRIPS provides that an exception to the exclusive rights conferred by a patent is justified if it complies with three conditions: it has to be “limited”, it should not “unreasonably conflict with a normal exploitation of the patent”, and it should not “unreasonably prejudice the legitimate interests of the patent owner, taking account of the legitimate interests of third parties”. However, the inclusion of pre-existing standards should not impact licences that are already in force. |
Amendment 4
Proposal for a regulation
Recital 7
| Text proposed by the Commission | Amendment |
| (7) Licensing on FRAND terms and conditions includes licensing royalty-free. Given that most issues arise with royalty-bearing licensing policies, this Regulation does not apply to royalty-free licensing. | (7) Licensing on FRAND terms and conditions includes licensing royalty-free, as they are key in the development of the digital society. Given that most issues arise with royalty-bearing licensing policies, this Regulation does not apply to royalty-free licensing. |
Amendment 5
Proposal for a regulation
Recital 8
| Text proposed by the Commission | Amendment |
| (8) In view of the global character of SEP licensing, references to aggregate royalty and FRAND determination may refer to global aggregate royalties and global FRAND determinations, or as otherwise agreed by the notifying stakeholders or the parties to the proceedings. | (8) In view of the global character of SEP licensing, references to aggregate royalty and FRAND determination may refer to global aggregate royalties and global FRAND determinations, or as otherwise agreed by the parties, between a SEP holder and an implementer. When referring to aggregate royalty and FRAND determination it is necessary to take into account the trade circumstances. |
Amendment 6
Proposal for a regulation
Recital 13
| Text proposed by the Commission | Amendment |
| (13) The competence centre should set up and administer an electronic register and an electronic database containing detailed information on SEPs in force in one or more Member States, including essentiality check results, opinions, reports, available case-law from jurisdictions across the globe, rules relating to SEPs in third countries, and results of studies specific to SEPs. In order to raise awareness and facilitate SEP licensing for SMEs, the competence centre should offer assistance to SMEs. The setting up and administering a system for essentiality checks and processes for aggregate royalty determination and FRAND determination by the competence centre should include actions improving the system and the processes on a continuous basis, including through the use of new technologies. In line with this objective, the competence centre should establish training procedures for evaluators of essentiality and conciliators for providing opinions on aggregate royalty as well as on FRAND determination and should encourage consistency in their practices. | (13) The competence centre should set up and administer an electronic register and an electronic database containing detailed information on SEPs in force in one or more Member States, including essentiality check results, opinions, reports, available case-law from jurisdictions across the globe, rules relating to SEPs in third countries, and results of studies specific to SEPs. In order to raise awareness and facilitate SEP licensing for SMEs, and microenterprises and start-ups, the competence centre should offer them particular assistance. The setting up and administering a system for essentiality checks and processes for aggregate royalty determination and FRAND determination by the competence centre should include actions improving the system and the processes on a continuous basis, including through the use of new technologies. In line with this objective, the competence centre should establish training procedures for evaluators of essentiality and conciliators for providing opinions on aggregate royalty as well as on FRAND determination and should encourage consistency in their practices. |
Amendment 7
Proposal for a regulation
Recital 15
| Text proposed by the Commission | Amendment |
| (15) Knowledge of the potential total royalty for all SEPs covering a standard (aggregate royalty) applicable to the implementations of that standard is important for the assessment of the royalty amount for a product, which plays a significant role for the manufacturer’s cost determinations. It also helps SEP holder to plan expected return on investment. The publication of the expected aggregate royalty and the standard licensing terms and conditions for a particular standard would facilitate SEP licensing and reduce the cost of SEP licensing. Thus, it is necessary to make public the information on total royalty rates (aggregate royalty) and the standard FRAND terms and conditions of licensing. | (15) Knowledge of the potential total royalty for all SEPs covering a standard (aggregate royalty) applicable to the implementations of that standard is important for the assessment of the royalty amount for a product, which plays a significant role for the manufacturer’s cost determinations. It also helps SEP holders to plan expected return on investment and SEP implementers to estimate the cost of standard integration in their products. The publication of the expected aggregate royalty and the standard licensing terms and conditions for a particular standard would facilitate SEP licensing and reduce the cost of SEP licensing. Thus, it is necessary to make public the information on total royalty rates (aggregate royalty) and the standard FRAND terms and conditions of licensing. |
Amendment 8
Proposal for a regulation
Recital 16
| Text proposed by the Commission | Amendment |
| (16) SEP holders should have the opportunity to first inform the competence centre of the publication of the standard or the aggregate royalty which they have agreed upon among themselves. Except for those use cases of standards for which the Commission establishes that there are well established and broadly well-functioning licensing practices of SEPs, the competence centre may assist the parties in the relevant aggregate royalty determination. In this context, if there is no agreement on an aggregate royalty among SEP holders, certain SEP holders may request the competence centre to appoint a conciliator to assist the SEP holders willing to participate in the process in determining an aggregate royalty for the SEPs covering the relevant standard. In this case, the role of the conciliator would be to facilitate the decision-making by the participating SEP holders without making any recommendation for an aggregate royalty. Finally, it is important to ensure that there is a third independent party, an expert, that could recommend an aggregate royalty. Therefore, SEP holders and/or implementers should be able to request the competence centre for an expert opinion on an aggregate royalty. When such a request is made, the competence centre should appoint a panel of conciliators and administer a process in which all interested stakeholders are invited to participate. After receiving information from all of the participants, the panel should provide a non-binding expert opinion for an aggregate royalty. The expert opinion on the aggregate royalty should contain a non-confidential analysis of the expected impact of the aggregate royalty on the SEP holders and the stakeholders in the value chain. Important in this respect would be to consider factors such as, efficiency of SEP licensing, including insights from any customary rules or practices for licensing of intellectual property in the value chain and cross-licensing, and impact on incentives to innovate of SEP holders and different stakeholders in the value chain. | (16) SEP holders should have the opportunity to first inform the competence centre of the publication of the standard for which they claim essentiality, or the aggregate royalty which they have agreed upon among themselves outside the standard development process. The competence centre may assist the parties in the relevant aggregate royalty determination. In this context, if there is no agreement on an aggregate royalty among SEP holders, certain SEP holders may request the competence centre to appoint a conciliator to assist the SEP holders willing to participate in the process in determining an aggregate royalty for the SEPs covering the relevant standard. In this case, the role of the conciliator would be to facilitate the decision-making by the participating SEP holders without making any recommendation for an aggregate royalty. Finally, it is important to ensure that there is a third independent party, an expert, that could recommend an aggregate royalty. Therefore, SEP holders and implementers should both be able to request the competence centre for an expert opinion on an aggregate royalty. When such a request is made, the competence centre should appoint a panel of conciliators and administer a process in which all interested stakeholders are invited to participate. After receiving information from all of the participants, the panel should provide a non-binding expert opinion for an aggregate royalty. The expert opinion on the aggregate royalty should contain a non-confidential analysis of the expected impact of the aggregate royalty on the SEP holders and the stakeholders in the value chain. Important in this respect would be to consider factors such as, efficiency of SEP licensing, including insights from any customary rules or practices for licensing of intellectual property in the value chain and cross-licensing, and impact on incentives to innovate of SEP holders and different stakeholders in the value chain. |
Amendment 9
Proposal for a regulation
Recital 18
| Text proposed by the Commission | Amendment |
| (18) Once a standard has been notified or an aggregate royalty is specified, whichever is made first, the competence centre will open the registration of SEPs by holders of SEPs in force in one or more Member States. | (18) Once a standard has been notified, the competence centre will open the registration of SEPs by holders of SEPs in force in one or more Member States. |
Amendment 10
Proposal for a regulation
Recital 20
| Text proposed by the Commission | Amendment |
| (20) SEP holders may register after the indicated time limit. However, in that case, SEP holders should not be able to collect royalties and claim damages for the period of delay. | (20) SEP holders may register after the indicated time limit. However, in that case, SEP holders should not be able to license or implement such SEPs or have any claim for infringements for the period of delay. It should be without prejudice to SEPs licensed before the entry into force of this Regulation. |
Amendment 11
Proposal for a regulation
Recital 23
| Text proposed by the Commission | Amendment |
| (23) A SEP holder may also request the modification of a SEP registration. An interested stakeholder may also request the modification of a SEP registration, if it can demonstrate that the registration is inaccurate based on a definitive decision by a public authority. A SEP can only be removed from the register at the request of the SEP holder, if the patent is expired, was invalidated or found non-essential by a final decision or ruling of a competent court of a Member State or found non-essential under this Regulation. | (23) A SEP holder may also request the modification of a SEP registration. An interested stakeholder may also request the modification of a SEP registration, if it can demonstrate that the registration is inaccurate based on a definitive decision by a public authority. A SEP can only be removed from the register at the request of the SEP holder, if the patent is expired, was invalidated or found non-essential by a final decision or ruling of a competent court of a Member State or found non-essential under this Regulation. A record of any modifications to the SEP register should be made publicly available to maintain transparency. |
Amendment 12
Proposal for a regulation
Recital 24
| Text proposed by the Commission | Amendment |
| (24) To further ensure the quality of the register and avoid over-registration, essentiality checks should also be conducted randomly by independent evaluators selected according to objective criteria to be determined by the Commission. Only one SEP from the same patent family should be checked for essentiality. | (24) To further ensure the quality of the register and avoid over-registration, essentiality checks should also be conducted randomly and anonymously by independent and impartial evaluators selected according to objective criteria to be determined by the Commission. Only one SEP from the same patent family should be checked for essentiality. |
Amendment 13
Proposal for a regulation
Recital 25 a (new)
| Text proposed by the Commission | Amendment |
| (25 a) While advantages should be granted to micro, small and medium enterprises, the advantages made available to these enterprises should not be open for cases of misuses. In this regard, patent assertion entities may be characterised by an “obtain and assert” business model, with the purpose of generating revenues through licensing fees, royalties and damage compensation should not benefit from exemption under this Regulation. |
Amendment 14
Proposal for a regulation
Recital 31
| Text proposed by the Commission | Amendment |
| (31) The purpose of the FRAND commitment is to facilitate adoption and use of the standard by making SEPs available to implementers on fair and reasonable terms and to provide the SEP holder a fair and reasonable return for its innovation. Thus, the ultimate goal of enforcement actions by SEP holders or actions brought by implementers based on a SEP holder’s refusal to license should be to conclude a FRAND licence agreement. The main objective of the Regulation in this regard is to facilitate the negotiations and out of court dispute resolution that can benefit both parties. Ensuring access to swift, fair and cost-efficient ways of resolving disputes on FRAND terms and conditions should benefit SEP holders and implementers alike. As such, a properly functioning out-of-court dispute resolution mechanism to determine FRAND terms (FRAND determination) may offer significant benefits for all parties. A party may request a FRAND determination in order to demonstrate that its offer is FRAND or to provide a security, when they engage in good faith. | (31) The purpose of the FRAND commitment is to facilitate adoption and use of the standard by making SEPs available to implementers on fair reasonable and non-discriminatory terms and to provide the SEP holder a fair and reasonable return for its innovation. Thus, the ultimate goal of enforcement actions by SEP holders or actions brought by implementers based on a SEP holder’s refusal to license should be to conclude a FRAND licence agreement. The main objective of the Regulation in this regard is to facilitate the negotiations and out of court dispute resolution that can benefit both parties. Ensuring access to swift, fair and cost-efficient ways of resolving disputes on FRAND terms and conditions should benefit SEP holders and implementers alike. As such, a properly functioning out-of-court dispute resolution mechanism to determine FRAND terms (FRAND determination) may offer significant benefits for all parties. A party may request a FRAND determination in order to demonstrate that its offer is FRAND or to provide a security, when they engage in good faith. |
Amendment 15
Proposal for a regulation
Recital 32
| Text proposed by the Commission | Amendment |
| (32) The FRAND determination should simplify and speed up negotiations concerning FRAND terms and reduce costs. The EUIPO should administer the procedure. The competence centre should create a roster of conciliators that satisfy established competence and independence criteria, as well as a repository of non-confidential reports (the confidential version of the reports will be accessible only by the parties and the conciliators). The conciliators should be neutral persons with extensive experience in dispute resolution and substantial understanding of the economics of licensing on FRAND terms and conditions. | (32) The FRAND determination should simplify and speed up negotiations concerning FRAND terms and reduce costs. The EUIPO should administer the procedure. The competence centre should create a roster of conciliators that satisfy established competence and independence criteria, as well as a repository of non-confidential reports (the confidential version of the reports will be accessible only by the parties and the conciliators). The conciliators should be neutral and impartial persons with extensive experience in dispute resolution and substantial understanding of the economics of licensing on FRAND terms and conditions. |
Amendment 16
Proposal for a regulation
Recital 33
| Text proposed by the Commission | Amendment |
| (33) The FRAND determination would be a mandatory step before a SEP holder would be able to initiate patent infringement proceedings or an implementer could request a determination or assessment of FRAND terms and conditions concerning a SEP before a competent court of a Member State. However, the obligation to initiate FRAND determination before the relevant court proceedings should not be required for SEPs covering those use cases of standards for which the Commission establishes that there are no significant difficulties or inefficiencies in licensing on FRAND terms. | (33) In case one or more parties initiate it, the FRAND determination should be a mandatory step before a SEP holder would be able to initiate patent infringement proceedings or an implementer could request a determination or assessment of FRAND terms and conditions concerning a SEP before a competent court of a Member State. Therefore, before initiating any patent infringement proceedings or claims proceedings before an EU court, the parties should undertake a conciliation procedure to determine the FRAND terms and conditions. This conciliation procedure should not exceed 9 months and its outcome should not be binding. |
Amendment 17
Proposal for a regulation
Recital 34
| Text proposed by the Commission | Amendment |
| (34) Each party may choose whether it wishes to engage in the procedure and commit to comply with its outcome. Where a party does not reply to the FRAND determination request or does not commit to comply with the outcome of the FRAND determination, the other party should be able to request either the termination or the unilateral continuation of the FRAND determination. Such a party should not be exposed to litigation during the time of the FRAND determination. At the same time, the FRAND determination should be an effective procedure for the parties to reach agreement before litigation or to obtain a determination to be used in further proceedings. Therefore, the party or parties that commit to complying with the outcome of the FRAND determination and duly engage in the procedure should be able to benefit from its completion. | (34) Each party may choose whether it wishes to engage in the procedure and commit to comply with its outcome. The FRAND determination should be an effective procedure for the parties to reach an agreement and settle any pending dispute or to obtain a determination to be used in further proceedings. Therefore, the party or parties that comply with the outcome of the FRAND determination and duly engage in the procedure should be able to benefit from its completion. |
Amendment 18
Proposal for a regulation
Recital 35
| Text proposed by the Commission | Amendment |
| (35) The obligation to initiate FRAND determination should not be detrimental to the effective protection of the parties’ rights. In that respect, the party that commits to comply with the outcome of the FRAND determination while the other party fails to do so should be entitled to initiate proceedings before the competent national court pending the FRAND determination. In addition, either party should be able to request a provisional injunctionof a financial nature before the competent court. In a situation where a FRAND commitment has been given by the relevant SEP holder, provisional injunctions of an adequate and proportionate financial nature should provide the necessary judicial protection to the SEP holder who has agreed to license its SEP on FRAND terms, while the implementer should be able to contest the level of FRAND royalties or raise a defence of lack of essentiality or of invalidity of the SEP. In those national systems that require the initiation of the proceedings on the merits of the case as a condition to request the interim measures of a financial nature, it should be possible to initiate such proceedings, but the parties should request that the case be suspended during the FRAND determination. When determining what level of the provisional injunction of financial nature is to be deemed adequate in a given case, account should be taken, inter alia, of the economic capacity of the applicant and the potential effects for the effectiveness of the measures applied for, in particular for SMEs, also in order to prevent the abusive use of such measures. It should also be clarified that once the FRAND determination is terminated, the whole range of measures, including provisional, precautionary and corrective measures, should be available to parties. | (35) The obligation to initiate FRAND determination should not be detrimental to the effective protection of the parties’ rights. In a situation where a FRAND commitment has been given by the relevant SEP holder, provisional injunctions of an adequate and proportionate financial nature should provide the necessary judicial protection to the SEP holder who has agreed to license its SEP on FRAND terms, while the implementer should be able to contest the level of FRAND royalties or raise a defence of lack of essentiality or of invalidity of the SEP. In those national systems that require the initiation of the proceedings on the merits of the case as a condition to request the interim measures of a financial nature, it should be possible to initiate such proceedings, but the parties should request that the case be suspended during the FRAND determination. When determining what level of the provisional injunction of financial nature is to be deemed adequate in a given case, account should be taken, inter alia, of the economic capacity of the applicant and the potential effects for the effectiveness of the measures applied for, in particular for SMEs, microenterprises and start-ups, also in order to prevent the abusive use of such measures. It should also be clarified that once the FRAND determination is terminated, the whole range of measures, including provisional, precautionary and corrective measures, should be available to parties. |
Amendment 19
Proposal for a regulation
Recital 37
| Text proposed by the Commission | Amendment |
| (37) Upon appointment, the conciliation centre should refer the FRAND determination to the conciliator, who should examine whether the request contains the necessary information, and communicate the schedule of procedure to the parties or the party requesting the continuations of the FRAND determination. | (37) Upon appointment, the conciliation centre should refer the FRAND determination to the conciliator, who should examine whether the request contains the necessary information, and communicate the schedule of procedure to the parties. |
Amendment 20
Proposal for a regulation
Recital 40
| Text proposed by the Commission | Amendment |
| (40) If a party initiates a procedure in a jurisdiction outside the Union resulting in legally binding and enforceable decisions regarding the same standard that is subject to FRAND determination and its implementation, or including SEPs from the same patent family as SEPs subject to FRAND determination and involving one or more of the parties to the FRAND determination as a party; before or during of the FRAND determination by a party, the conciliator, or where he/she has not been appointed has not been established, the competence centre, should be able to terminate the procedure upon the request of the other party. | (40) If a party initiates a procedure in a jurisdiction outside the Union resulting in legally binding and enforceable decisions regarding the same standard that is subject to FRAND determination and its implementation, or including SEPs from the same patent family as SEPs subject to FRAND determination and involving one or more of the parties to the FRAND determination as a party; before or during of the FRAND determination by a party, the conciliator, or where he/she has not been appointed has not been established, the competence centre, should be able to terminate the procedure upon the request of any party. |
Amendment 21
Proposal for a regulation
Recital 45
| Text proposed by the Commission | Amendment |
| (45) SEP licensing may cause friction in the value chains that have so far not been exposed to SEPs. It is, therefore, important that the competence centre raises awareness concerning SEP licensing in the value chain through any of the tools at its disposal. Other factors would include the ability of upstream manufacturers to pass the cost of a SEP licence downstream and any potential impact of existing indemnification clauses within a value chain. | (45) SEP licensing may cause friction in the value chains that have so far not been exposed to SEPs. It is, therefore, important that the competence centre raises awareness concerning SEP licensing in the value chain through any of the tools at its disposal. Other factors would include the ability of upstream manufacturers to pass the cost of a SEP licence downstream and any potential impact of existing indemnification clauses within a value chain. The framework foreseen in this Regulation shall promote the EU's technological leadership in innovation. |
Amendment 22
Proposal for a regulation
Recital 46
| Text proposed by the Commission | Amendment |
| (46) SMEs may be involved in SEP licensing both as SEP holders and implementers. While there are currently a few SME SEP holders, the efficiencies produced with this Regulation are likely to facilitate the licensing of their SEP. Additional conditions are necessary to relieve the cost burden on such SMEs such as reduced administration fees and potentially reduced fees for essentiality checks and conciliation in addition to free support and trainings. The SEPs of micro and small enterprises should not be the subject of sampling for essentiality check, but they should be able to propose SEPs for essentiality checks if they wish to. SME implementers should likewise benefit from reduced access fees and free support and trainings. Finally, SEP holders should be encouraged to incentivise licensing by SMEs through low volume discounts or exemptions from FRAND royalties. | (46) SMEs may be involved in SEP licensing both as SEP holders and implementers. While there are currently a few SME SEP holders, the efficiencies produced with this Regulation are likely to facilitate the licensing of their SEP. Additional conditions are necessary to relieve the cost burden on such SMEs such as reduced administration fees and potentially reduced fees for essentiality checks and conciliation in addition to free support and trainings. The SEPs of start-ups, micro and small enterprises should not be the subject of sampling for essentiality check, but they should be able to propose SEPs for essentiality checks if they wish to. SME and start-up implementers should likewise benefit from reduced access fees and free support and trainings. Finally, SEP holders should be encouraged to incentivise licensing by SMEs through low volume discounts or exemptions from FRAND royalties. |
Amendment 23
Proposal for a regulation
Recital 47
| Text proposed by the Commission | Amendment |
| (47) In order to supplement certain non-essential elements of this Regulation, the power to adopt acts, in accordance with Article 290 of the Treaty on the Functioning of the European Union, should be delegated to the Commission in respect of the items to be entered in the register or in respect of determining the relevant existing standards or to identify use cases of standards or parts thereof for which the Commission establishes that there are no significant difficulties or inefficiencies in licensing on FRAND terms. It is of particular importance that the Commission carry out appropriate consultations during its preparatory work, including at expert level, and that those consultations be conducted in accordance with the principles laid down in the Interinstitutional Agreement of 13 April 2016 on Better Law-Making44 . In particular, to ensure equal participation in the preparation of delegated acts, the European Parliament and the Council receive all documents at the same time as Member States’ experts, and their experts systematically have access to meetings of Commission expert groups dealing with the preparation of delegated acts. | (47) In order to supplement certain non-essential elements of this Regulation, the power to adopt acts, in accordance with Article 290 of the Treaty on the Functioning of the European Union, should be delegated to the Commission in respect of the items to be entered in the register. It is of particular importance that the Commission carry out appropriate consultations during its preparatory work, including at expert level, and that those consultations be conducted in accordance with the principles laid down in the Interinstitutional Agreement of 13 April 2016 on Better Law-Making44 . In particular, to ensure equal participation in the preparation of delegated acts, the European Parliament and the Council receive all documents at the same time as Member States’ experts, and their experts systematically have access to meetings of Commission expert groups dealing with the preparation of delegated acts. |
| __________________ | __________________ |
| 44 OJ L 123, 12.5.2016, p. 1. | 44 OJ L 123, 12.5.2016, p. 1. |
Amendment 24
Proposal for a regulation
Recital 48
| Text proposed by the Commission | Amendment |
| (48) In order to ensure uniform conditions for the implementation of the relevant provisions of this Regulation, implementing powers should be conferred on the Commission to adopt the detailed requirements for the selection of evaluators and conciliators, as well as adopt the rules of procedure and Code of Conduct for evaluators and conciliators. The Commission should also adopt the technical rules for the selection of a sample of SEPs for essentiality checks and the methodology for the conduct of such essentiality checks by evaluators and peer evaluators. The Commission should also determine any administrative fees for its services in relation to the tasks under this Regulation and fees for the services evaluators, experts and conciliators, derogations thereof and payment methods and adapt them as necessary. The Commission should also determine the standards or parts thereof that have been published before the entry into force of this Regulation, for which SEPs can be registered. Those powers should be exercised in accordance with Regulation (EU) No 182/2011 of the European Parliament and of the Council.45 | (48) In order to ensure uniform conditions for the implementation of the relevant provisions of this Regulation, implementing powers should be conferred on the Commission to adopt the detailed requirements for the selection of evaluators and conciliators, as well as adopt the rules of procedure and Code of Conduct for evaluators and conciliators. Evaluators and conciliators should be, at all times, of good repute and possess sufficient knowledge, skills and experience to performer their duties. The Commission should also adopt the technical rules for the selection of a sample of SEPs for essentiality checks and the methodology for the conduct of such essentiality checks by evaluators and peer evaluators. The Commission should also determine any administrative fees for its services in relation to the tasks under this Regulation and fees for the services evaluators, experts and conciliators, derogations thereof and payment methods and adapt them as necessary. Those powers should be exercised in accordance with Regulation (EU) No 182/2011 of the European Parliament and of the Council.45 |
| __________________ | __________________ |
| 45 Regulation (EU) No 182/2011 of the European Parliament and of the Council laying down the rules and general principles concerning mechanisms for control by the Member States of the Commission’s exercise of implementing powers (OJ L 55, 28.2.2011, p. 13.) | 45 Regulation (EU) No 182/2011 of the European Parliament and of the Council laying down the rules and general principles concerning mechanisms for control by the Member States of the Commission’s exercise of implementing powers (OJ L 55, 28.2.2011, p. 13.) |
Amendment 25
Proposal for a regulation
Article 1 – paragraph 2 – introductory part
| Text proposed by the Commission | Amendment |
| 2. This Regulation shall apply to patents that are essential to a standard that has been published by a standard development organisation, to which the SEP holder has made a commitment to license its SEPs on fair, reasonable and non-discriminatory (FRAND) terms and conditions and that is not subject to a royalty-free intellectual property policy, | 2. This Regulation shall apply to patents that are in force in one or more Member States and have been declared essential to a standard that has been published by a standard development organisation, to which the current SEP holder or a former SEP holder has made a commitment to license its SEPs on fair, reasonable and non-discriminatory (FRAND) terms and conditions and that are not subject to a royalty-free intellectual property policy. |
Amendment 26
Proposal for a regulation
Article 1 – paragraph 2 – point a
| Text proposed by the Commission | Amendment |
| (a) after the entry into force of this Regulation, with the exceptions provided in paragraph 3; | deleted |
Amendment 27
Proposal for a regulation
Article 1 – paragraph 2 – point b
| Text proposed by the Commission | Amendment |
| (b) before the entry into force of this Regulation, in accordance with Article 66. | deleted |
Amendment 28
Proposal for a regulation
Article 1 – paragraph 3
| Text proposed by the Commission | Amendment |
| 3. Articles 17 and 18 and Article 34(1) shall not apply to SEPs to the extent that they are implemented for use cases identified by the Commission in accordance with paragraph 4. | deleted |
Amendment 29
Proposal for a regulation
Article 1 – paragraph 4
| Text proposed by the Commission | Amendment |
| 4. Where there is sufficient evidence that, as regards identified use cases of certain standards or parts thereof, SEP licensing negotiations on FRAND terms do not give rise to significant difficulties or inefficiencies affecting the functioning of the internal market, the Commission shall, after an appropriate consultation process, by means of a delegated act pursuant to Article 67, establish a list of such use cases, standards or parts thereof, for the purposes of paragraph 3. | deleted |
Amendment 30
Proposal for a regulation
Article 1 – paragraph 5
| Text proposed by the Commission | Amendment |
| 5. This Regulation shall apply to holders of SEP in force in one or more Member States. | deleted |
Amendment 31
Proposal for a regulation
Article 2 – paragraph 1 – point 1
| Text proposed by the Commission | Amendment |
| (1) ‘standard essential patent’ or ‘SEP’ means any patent that is essential to a standard; | (1) ‘standard essential patent’ or ‘SEP’ means any patent that is declared to be essential to a standard; |
Amendment 32
Proposal for a regulation
Article 2 – paragraph 1 – point 2
| Text proposed by the Commission | Amendment |
| (2) ‘essential to a standard’ means that the patent contains at least one claim for which it is not possible on technical grounds to make or use an implementation or method which complies with a standard, including options therein, without infringing the patent under the current state of the art and normal technical practice; | (2) ‘essential to a standard’ means that the patent declared to contain at least one claim for which it is not possible on technical grounds to make or use an implementation or method which complies with a published standard, including options therein, without infringing the patent under the current state of the art and normal technical practice; |
Amendment 33
Proposal for a regulation
Article 2 – paragraph 1 – point 7
| Text proposed by the Commission | Amendment |
| (7) ‘implementer’ means a natural or legal person that implements, or intends to implement, a standard in a product, process, service or system; | (7) ‘implementer’ means a natural or legal person that implements, or intends to implement, a standard in a product, process, service or system on the European Union market; |
Amendment 34
Proposal for a regulation
Article 2 – paragraph 1 – point 11
| Text proposed by the Commission | Amendment |
| (11) ‘patent pool’ means an entity created by an agreement between two or more SEP holders to license one or more of their patents to one another or to third parties; | (11) ‘patent pool’ means an entity created by an agreement or consortium between two or more SEP holders to license one or more of their patents to one another or to third parties, on an ongoing basis; |
Amendment 35
Proposal for a regulation
Article 2 – paragraph 1 – point 18 a (new)
| Text proposed by the Commission | Amendment |
| (18 a) ‘patent assertion entity’ means an entity that derives its revenue from the enforcement or licensing of patents, including any damages or monetary awards from the assertion of such patents, and that does not engage in the production, manufacture, sale, or distribution of goods or services utilising the patented inventions or in the research and development of such inventions, that is not an educational or research institution, or a technology transfer organisation facilitating the commercialisation of technological innovations generated by them, and that is not an individual inventor asserting patents originally granted to that inventor or patents that cover technologies originally developed by that inventor. |
Amendment 36
Proposal for a regulation
Article 2 a (new)
| Text proposed by the Commission | Amendment |
| Article 2 a | |
| Obligation to license on FRAND terms and conditions | |
| Holders of patents essential to a standard within the scope of this Regulation pursuant to Article 1(2) shall not refuse a licence in an unfounded way to any party willing to accept licence based FRAND terms and conditions. |
Amendment 37
Proposal for a regulation
Article 3 – paragraph 2 – point a
| Text proposed by the Commission | Amendment |
| (a) set up and maintain an electronic register and an electronic database for SEPs; | (a) set up and maintain an electronic register and an electronic database for SEPs complying with the General Data Protection Regulation; |
Amendment 38
Proposal for a regulation
Article 3 – paragraph 2 – point c
| Text proposed by the Commission | Amendment |
| (c) set up and administer a system for assessment of the essentiality of SEPs; | (c) set up and administer a system for assessment of the essentiality of SEPs based on explicit and verifiable criteria; |
Amendment 39
Proposal for a regulation
Article 3 – paragraph 2 – point f
| Text proposed by the Commission | Amendment |
| (f) administer a process for aggregate royalty determination; | (f) administer a process for facilitating agreements on aggregate royalty determination; |
Amendment 40
Proposal for a regulation
Article 3 – paragraph 2 – point h
| Text proposed by the Commission | Amendment |
| (h) provide training, support and general advice on SEPs to SMEs; | (h) provide training, support and general advice on SEPs, in particular to SMEs, microenterprises and start-ups; |
Amendment 41
Proposal for a regulation
Article 3 – paragraph 3 a (new)
| Text proposed by the Commission | Amendment |
| 3 a. The competence centre shall be equipped with the right expertise and resources and coordinated with both regional and global IP organisations, such as the European Patent Organisation and the World Intellectual Property Organisation. |
Amendment 42
Proposal for a regulation
Article 4 – paragraph 3 – point i
| Text proposed by the Commission | Amendment |
| (i) the existence of any public standard terms and conditions for SEP licensing to SMEs; | (i) the existence of any public standard terms and conditions for SEP licensing to SMEs, microenterprises and start-ups; |
Amendment 43
Proposal for a regulation
Article 4 – paragraph 4 – point c
| Text proposed by the Commission | Amendment |
| (c) information on whether an essentiality check or peer evaluation have been performed and reference to the result; | (c) any information on an essentiality check or peer evaluation performed before the registration and the result of the essentiality check; |
Amendment 44
Proposal for a regulation
Article 4 – paragraph 4 a (new)
| Text proposed by the Commission | Amendment |
| 4 a. Prior to registering their patents, SEP holders may voluntarily submit their SEPs for essentiality checking to the competence centre, which may accept or refuse to do so. |
Amendment 45
Proposal for a regulation
Article 5 – paragraph 1
| Text proposed by the Commission | Amendment |
| 1. The competence centre shall establish and maintain an electronic database for SEPs. | 1. The competence centre shall establish and maintain an electronic database for SEPs, complying with the General Data Protection Regulation. |
Amendment 46
Proposal for a regulation
Article 5 – paragraph 2 – introductory part
| Text proposed by the Commission | Amendment |
| 2. The following information in the database shall be accessible to any third party subject to the registration with the competence centre: | 2. The following information in the database shall be accessible to any third party, including courts and other public authorities, subject to the registration with the competence centre: |
Amendment 47
Proposal for a regulation
Article 5 – paragraph 2 – point c
| Text proposed by the Commission | Amendment |
| (c) public standard terms and conditions for SEP licensing to SMEs pursuant to Article 62(1), if available; | (c) public standard terms and conditions for SEP licensing to SMEs, microenterprises and start-ups pursuant to Article 62(1), if available; |
Amendment 48
Proposal for a regulation
Article 5 – paragraph 2 – point d
| Text proposed by the Commission | Amendment |
| (d) information regarding known products, processes, services or systems and implementations pursuant to Article 7, first paragraph, point (b); | (d) information regarding known products, processes, services or systems and implementations and where available projected pricing, expected sales volumes and any other relevant market data pursuant to Article 7; |
Amendment 49
Proposal for a regulation
Article 5 – paragraph 2 – point k
| Text proposed by the Commission | Amendment |
| (k) the date and the grounds for removal of the SEP from the database pursuant to Article 25; | (k) the date and the grounds for removal of the SEP from the database pursuant to Article 25, and a record of all relevant information on the removed SEP; |
Amendment 50
Proposal for a regulation
Article 5 – paragraph 3
| Text proposed by the Commission | Amendment |
| 3. Access to the information pursuant to paragraph (2), points (f), (h), (i), (j) and (k) may be subject to the payment of a fee. | 3. Access to the information pursuant to paragraph (2), points (f), (h), (i), (j) and (k) may be subject to the payment of a fee where justified. |
Amendment 51
Proposal for a regulation
Article 6 – paragraph 1
| Text proposed by the Commission | Amendment |
| 1. When a party requests that data and documents of the database be kept confidential, that party shall provide a non-confidential version of the information submitted in confidence in sufficient detail to permit a reasonable understanding of the substance of the information submitted in confidence. The competence centre may disclose that non-confidential version. | 1. When a party requests that data and documents of the database be kept confidential, that party shall provide a reasoned statement justifying this confidentiality and a non-confidential version of the information submitted in confidence in sufficient detail to permit a reasonable understanding of the substance of the information submitted in confidence. The competence centre may disclose that non-confidential version. |
Amendment 52
Proposal for a regulation
Article 7 – paragraph 1 – introductory part
| Text proposed by the Commission | Amendment |
| A SEP holder shall provide to the competence centre the following information: | Any holder of a patent in force in one or more Member States and which is essential to a standard for which FRAND commitments have been made shall provide to the competence centre the following information: |
Amendment 53
Proposal for a regulation
Article 7 – paragraph 1 – point a
| Text proposed by the Commission | Amendment |
| (a) information as regards the products, processes, services or systems in which the subject-matter of the SEP may be incorporated or to which it is intended to be applied, for all existing or potential implementations of a standard, to the extent such information is known to the SEP holder. | (a) information as regards the products, processes, services or systems in which the subject-matter of the SEP may be incorporated or to which it is intended to be applied, for all existing or potential implementations of a standard, to the extent and as soon as such information is known to the SEP holder. |
Amendment 54
Proposal for a regulation
Article 7 – paragraph 1 – point b
| Text proposed by the Commission | Amendment |
| (b) where available, its standard terms and conditions for SEP licensing, including its royalty and discount policies, within 7 months from the opening of the registration for the relevant standard and implementation by the competence centre. | (b) where available, its standard terms and conditions for SEP licensing, including its royalty and discount policies, within 7 months from the opening of the registration for the SEP by the competence centre. |
Amendment 55
Proposal for a regulation
Article 7 – paragraph 1 a (new)
| Text proposed by the Commission | Amendment |
| A SEP implementer may also voluntarily provide the competence centre with information regarding the products, processes, services or systems in which the subject-matter of the SEP may be incorporated or to which it is intended to be applied, as well as projected pricing, expected sales volumes and any other relevant market data. |
Amendment 56
Proposal for a regulation
Article 8 – paragraph 1 – introductory part
| Text proposed by the Commission | Amendment |
| A SEP holder shall provide to the competence centre the following information to be included in the database and referenced in the register: | Any holder of a patent in force in one or more Member States and which is essential to a standard for which FRAND commitments have been made shall provide to the competence centre the following information to be included in the database and referenced in the register: |
Amendment 57
Proposal for a regulation
Article 8 – paragraph 1 – point b
| Text proposed by the Commission | Amendment |
| (b) any essentiality check prior to [OJ: please insert the date = 24 months from entry into force of this regulation] by an independent evaluator in the context of a pool, identifying the SEP registration number, the identity of the patent pool and its administrator, and the evaluator. | (b) any essentiality check prior to [OJ: please insert the date = 24 months from entry into force of this regulation] by an independent evaluator in the context of a pool, identifying the SEP registration number, the identity of the patent pool and its administrator, and the evaluator; |
Amendment 58
Proposal for a regulation
Article 8 – paragraph 1 – point b a (new)
| Text proposed by the Commission | Amendment |
| (b a) any information on essentiality check or peer evaluation performed before the registration of the standard essential patent as described under Article 4(4)(c). |
Amendment 59
Proposal for a regulation
Article 9 – paragraph 1 – point g
| Text proposed by the Commission | Amendment |
| (g) list of products, services and processes that may be licensed through the patent pool or the entity; | (g) list of products, services and processes that may be licensed through the patent pool; |
Amendment 60
Proposal for a regulation
Article 9 – paragraph 1 – point h
| Text proposed by the Commission | Amendment |
| (h) royalties and discount policy per product category; | (h) royalties, including, if applicable, aggregate royalty retained and detailed, per SEP owner in the pool, their method of calculation and discount policy per product category; |
Amendment 61
Proposal for a regulation
Article 9 – paragraph 1 a (new)
| Text proposed by the Commission | Amendment |
| 1a. By way of derogation from paragraph 1, patent pools, in case of confidentiality agreements and confidential procedures, shall provide the protected information directly to the competence centre. |
Amendment 62
Proposal for a regulation
Article 9 – paragraph 1 b (new)
| Text proposed by the Commission | Amendment |
| 1b. The competence centre shall verify and report on the accuracy of the information published by patent pools in accordance with paragraph 1 on a regular basis and at least once a year, based on a publicly available methodology ensuring thorough, transparent and consistent verification. |
Amendment 63
Proposal for a regulation
Article 11 – paragraph 1
| Text proposed by the Commission | Amendment |
| 1. Persons involved in alternative dispute resolution proceedings concerning SEPs in force in a Member State shall disclose to the competence centre within 6 months from the termination of the procedure the standards and the implementations concerned, the methodology used for the calculation of FRAND terms and conditions, information on the name of the parties, and on specific licensing rates determined. | 1. Persons involved in alternative dispute resolution proceedings concerning SEPs in force in a Member State shall disclose to the competence centre within 4 months from the termination of the procedure the standards and the implementations concerned, the methodology used for the calculation of FRAND terms and conditions, information on the name of the parties, and on specific licensing rates determined. |
Amendment 64
Proposal for a regulation
Article 12 – paragraph 2
| Text proposed by the Commission | Amendment |
| 2. Any person may provide the competence centre with such information as well as information on updates, corrections and public consultations. The competence centre shall publish that information in the database. | 2. Any person may provide the competence centre with such information as well as information on updates, corrections and public consultations. The competence centre shall verify as far as possible that information before publishing it in the database. |
Amendment 65
Proposal for a regulation
Article 13 – paragraph 2 – point c a (new)
| Text proposed by the Commission | Amendment |
| (c a) informing the public and any interested parties of the existence of standards, with easily accessible research tools; |
Amendment 66
Proposal for a regulation
Article 14 – paragraph 1 – introductory part
| Text proposed by the Commission | Amendment |
| 1. Holders of a patent in force in one or more Member States which is essential to a standard for which FRAND commitments have been made shall notify to the competence centre, where possible through the standard development organisation or through a joint notification, the following information: | 1. Holders of a patent in force in one or more Member States which is declared to be essential to a standard for which FRAND commitments have been made shall notify to the competence centre, through a joint notification, the following information: |
Amendment 67
Proposal for a regulation
Article 14 – paragraph 4 a (new)
| Text proposed by the Commission | Amendment |
| 4 a. Any implementer or any holder, of a SEP in force in one or more Member State that is declared to be essential to a standard that has been published before the entry into force of this Regulation, in the absence of notification under paragraph (1), (3) or under paragraph (4), may notify, to the competence centre the information referred to in paragraph (1). |
Amendment 68
Proposal for a regulation
Article 14 – paragraph 5
| Text proposed by the Commission | Amendment |
| 5. The competence centre shall also notify the relevant standard development organisation of the publication. In case of notification pursuant to paragraphs (3) and (4), it shall also notify, where possible, known SEP holders individually or request confirmation from the standard development organisation that it has duly notified the SEP holders. | 5. The competence centre shall also notify the relevant standard development organisation of the publication. In case of notification pursuant to paragraphs (3) and (4), it shall also notify, where possible, known SEP holders individually. |
Amendment 69
Proposal for a regulation
Article 14 – paragraph 6
| Text proposed by the Commission | Amendment |
| 6. The competence centre shall publish on the EUIPO website the notifications made pursuant to paragraphs (1), (3) and (4) for comments by stakeholders. Stakeholders may submit their comments to the competence centre within 30 days from the publication of the list. | 6. The competence centre shall publish on the EUIPO website the notifications made pursuant to paragraphs (1), (3), (4) and (4a) for comments by stakeholders. Stakeholders may submit their comments to the competence centre within 30 days from the publication of the list. |
Amendment 70
Proposal for a regulation
Article 17 – paragraph 1
| Text proposed by the Commission | Amendment |
| 1. Holders of SEPs in force in one or more Member States representing at least 20 % of all SEPs of a standard may request the competence centre to appoint a conciliator from the roster of conciliators to mediate the discussions for a joint submission of an aggregate royalty. | 1. Holders of SEPs in force in one or more Member States may request the competence centre to appoint a conciliator from the roster of conciliators to mediate the discussions for a joint submission of an aggregate royalty. |
Amendment 71
Proposal for a regulation
Article 17 – paragraph 2 a (new)
| Text proposed by the Commission | Amendment |
| 2 a. In case of a standard published before the entry into force of this Regulation the request referred to in paragraph (1) of this Article may be made no later than 150 days following the publication by the competence centre of the information pursuant to Article 14(7). |
Amendment 72
Proposal for a regulation
Article 17 – paragraph 4 a (new)
| Text proposed by the Commission | Amendment |
| 4 a. The competence centre shall publish a call for expression of interest to invite other holders of SEPs for the standard, current implementers and implementers intending to place products with the standard on the market to participate in the process. |
Amendment 73
Proposal for a regulation
Article 17 – paragraph 5
| Text proposed by the Commission | Amendment |
| 5. The competence centre shall appoint a conciliator from the roster of conciliators and inform all SEP holders that expressed interest to participate in the process. | 5. The competence centre shall appoint a conciliator from the roster of conciliators and inform all SEP holders and implementers that expressed interest to participate in the process. |
Amendment 74
Proposal for a regulation
Article 17 – paragraph 6
| Text proposed by the Commission | Amendment |
| 6. SEP holders that submit to the conciliator confidential information shall provide a non-confidential version of the information submitted in confidence in sufficient detail to permit a reasonable understanding of the substance of the information submitted in confidence. | 6. SEP holders and implementers that submit to the conciliator confidential information shall provide a non-confidential version of the information submitted in confidence in sufficient detail to permit a reasonable understanding of the substance of the information submitted in confidence. |
Amendment 75
Proposal for a regulation
Article 17 – paragraph 7
| Text proposed by the Commission | Amendment |
| 7. Where the SEP holders fail to make a joint notification within 6 months from the appointment of the conciliator, the conciliator shall terminate the process. | 7. Where the SEP holders fail to make an agreement regarding the joint notification submission of an aggregate royalty within 6 months from the appointment of the conciliator, the conciliator shall terminate the process. |
Amendment 76
Proposal for a regulation
Article 17 – paragraph 8
| Text proposed by the Commission | Amendment |
| 8. If the contributors agree on a joint notification, the procedure set out in Article 15(1), (2) and (4) shall apply. | 8. If the SEP holders agree on a joint notification, the procedure set out in Article 15(1), (2) and (4) shall apply. |
Amendment 77
Proposal for a regulation
Article 18 – paragraph 1
| Text proposed by the Commission | Amendment |
| 1. A SEP holder or an implementer may request the competence centre for a non-binding expert opinion on a global aggregate royalty. | 1. A SEP holder or an implementer may request the competence centre for a non-binding expert opinion on an aggregate royalty. An implementer shall be able to make this request, even if an agreement amongst SEP holders had already been reached, including through the procedure described in Article 15 to 17. |
Amendment 78
Proposal for a regulation
Article 18 – paragraph 2 – introductory part
| Text proposed by the Commission | Amendment |
| 2. The request referred to in paragraph (1) shall be made no later than 150 days after: | 2. The request made by a SEP holder as referred to in paragraph (1) shall be made no later than 150 days after: |
Amendment 79
Proposal for a regulation
Article 18 – paragraph 2 a (new)
| Text proposed by the Commission | Amendment |
| 2 a. In the case of a standard published before the entry into force of this Regulation, the request referred to in paragraph (1) shall be made no later than 150 days following the publication by the competence centre of the information pursuant to Article 14(7). |
Amendment 80
Proposal for a regulation
Article 18 – paragraph 3 – point d a (new)
| Text proposed by the Commission | Amendment |
| (d a) description of the final product in which it should be implemented. |
Amendment 81
Proposal for a regulation
Article 18 – paragraph 4
| Text proposed by the Commission | Amendment |
| 4. The competence centre shall notify the relevant standard development organisation and all known stakeholders of the request. It shall publish the request on EUIPO's website and invite stakeholders to express interest in participating in the process within 30 days from the day when the request was published. | 4. The competence centre shall notify all known stakeholders of the request. It shall publish the request on EUIPO's website and invite stakeholders to express interest in participating in the process within 30 days from the day when the request was published. |
Amendment 82
Proposal for a regulation
Article 18 – paragraph 5
| Text proposed by the Commission | Amendment |
| 5. Any stakeholder may request to participate in the process after explaining the basis of its interest. SEP holders shall provide their estimated percentage of those SEPs of all SEPs for a standard. Implementers shall provide information on any relevant implementations of the standard, including any relevant market share in the Union. | 5. Any stakeholder may request to participate in the process after explaining the basis of its interest. SEP holders shall provide their estimated percentage of those SEPs of all SEPs for a standard. Implementers shall provide information on any relevant current or potential implementations of the standard, including any relevant market share in the Union. |
Amendment 83
Proposal for a regulation
Article 18 – paragraph 6
| Text proposed by the Commission | Amendment |
| 6. If the requests for participation include SEP holders representing collectively at least an estimated 20% of all SEPs for the standard, and implementers holding collectively at least 10% relevant market share in the Union or at least 10 SMEs, the competence centre shall appoint a panel of three conciliators selected from the roster of conciliators with the appropriate background from the relevant field of technology. | 6. If the requests for participation include at least 5 SEP holders representing collectively all SEPs for the standard, or a minimum of 3 implementers or at least 5 SMEs or start-ups, the competence centre shall appoint a panel of three conciliators selected from the roster of conciliators having appropriate experience in the relevant field of technology. |
Amendment 84
Proposal for a regulation
Article 18 – paragraph 8 – introductory part
| Text proposed by the Commission | Amendment |
| 8. Following the appointment, the panel shall request the participating SEP holders to, within one month: | 8. Within one month following the appointment, the panel shall request the participating SEP holders, as well as the participating implementers or the non-participants, to: |
Amendment 85
Proposal for a regulation
Article 18 – paragraph 8 – point b a (new)
| Text proposed by the Commission | Amendment |
| (b a) provide any evidence or observations to assist the panel in determining an opinion on aggregate royalty. |
Amendment 86
Proposal for a regulation
Article 18 – paragraph 11
| Text proposed by the Commission | Amendment |
| 11. 1The expert opinion shall include a summary of the information provided in the request, the information referred to in Article 15(2), the names of the conciliators, the procedure, the reasons for the opinion on the aggregate royalty and the underlying methodology. The reasons for any divergent views shall be specified in an annex to the expert opinion. | 11. The expert opinion shall include the recommended aggregate royalty rate, a summary of the information provided in the request, the information referred to in Article 15(2), the names of the conciliators, the procedure, the reasons for the opinion on the aggregate royalty and the underlying methodology. The reasons for any divergent views shall be specified in an annex to the expert opinion. |
Amendment 87
Proposal for a regulation
Article 19 – paragraph 1 – introductory part
| Text proposed by the Commission | Amendment |
| 1. The competence centre shall create an entry in the register for a standard for which FRAND commitments have been made within 60 days from the earliest of the following events: | 1. The competence centre shall create an entry in the register for a standard or part thereof, for which FRAND commitments have been made within 60 days from the earliest of the following events: |
Amendment 88
Proposal for a regulation
Article 19 – paragraph 1 – point a
| Text proposed by the Commission | Amendment |
| (a) publication by the competence centre of the standard and related information pursuant to Article 14(7); | (a) publication by the competence centre of the information pursuant to Article 14(7); |
Amendment 89
Proposal for a regulation
Article 19 – paragraph 2
| Text proposed by the Commission | Amendment |
| 2. The competence centre shall publish a notice on the EUIPO website informing stakeholders that an entry in the register has been made and refer to the publications referred to in paragraph (1). The competence centre shall notify known SEP holders individually by electronic means and the relevant standard development organisation of the notice in this paragraph. | 2. The competence centre shall publish a notice on the EUIPO website informing stakeholders that an entry in the register has been made and refer to the publications referred to in paragraph (1). The competence centre shall notify known SEP holders individually by electronic means of the notice in this paragraph. |
Amendment 90
Proposal for a regulation
Article 20 – paragraph 1
| Text proposed by the Commission | Amendment |
| 1. Upon request of a SEP holder the competence centre shall register any patent in force in one or more Member States and falling within the scope of this Regulation that is essential for a standard, for which the competence centre has published a notice pursuant to Article 19(2). | 1. Upon request of a SEP holder the competence centre shall register any SEP in force in one or more Member States for which the competence centre has published a notice pursuant to Article 19(2). |
Amendment 91
Proposal for a regulation
Article 22 – paragraph 1
| Text proposed by the Commission | Amendment |
| 1. A sample of SEP registrations shall be checked annually for completeness and correctness. | 1. Annually, the EUIPO shall check a sample of SEP registrations in order to verify their completeness and correctness. |
Amendment 92
Proposal for a regulation
Article 22 – paragraph 4 a (new)
| Text proposed by the Commission | Amendment |
| 4 a. If the SEP has been suspended from the register pursuant to paragraph 4, the date of registration shall be the date when the incompleteness or inaccuracy has been effectively and completely remedied. |
Amendment 93
Proposal for a regulation
Article 24 – paragraph 2
| Text proposed by the Commission | Amendment |
| 2. A SEP holder that has not registered its SEPs within the time-limit set out in Article 20(3) shall not be entitled to receive royalties or seek damages for infringement of such SEPs in relation to the implementation of the standard for which registration is required, from the time-limit set out in Article 20(3) until its registration in the register. | 2. A SEP holder that has not registered its SEPs within the time-limit set out in Article 20(3) shall not be entitled to have no claim for infringements of such SEPs in relation to the implementation of the standard for which registration is required, from the time-limit set out in Article 20(3) until its registration in the register. |
Amendment 94
Proposal for a regulation
Article 24 – paragraph 2 a (new)
| Text proposed by the Commission | Amendment |
| 2 a. Paragraphs (1) and (2) are without prejudice to provisions included in contracts setting a royalty for patents declared to be essential to a standard concluded and applied before the entry into force of this Regulation. |
Amendment 95
Proposal for a regulation
Article 24 – paragraph 3
| Text proposed by the Commission | Amendment |
| 3. Paragraphs (1) and (2) are without prejudice to provisions included in contracts setting a royalty for a broad portfolio of patents, present or future, stipulating that the invalidity, non-essentiality or unenforceability of a limited number thereof shall not affect the overall amount and enforceability of the royalty or other terms and conditions of the contract. | deleted |
Amendment 96
Proposal for a regulation
Article 25 – paragraph 3
| Text proposed by the Commission | Amendment |
| 3. The competence centre shall remove the SEP from the register and the database. | 3. The competence centre shall remove the SEP from the register and the database. The competence centre shall maintain and make publicly available information on any SEP that had been removed from the register. |
Amendment 97
Proposal for a regulation
Article 26 – paragraph 4
| Text proposed by the Commission | Amendment |
| 4. The competence centre shall appoint [10] evaluators from the roster of evaluators as peer evaluators for a period of [three] years. | 4. The competence centre shall appoint [10] evaluators from the roster of evaluators as peer evaluators for a period of [three] years that shall act in anonymity. |
Amendment 98
Proposal for a regulation
Article 26 – paragraph 5 – introductory part
| Text proposed by the Commission | Amendment |
| 5. By [OJ: please insert the date = 18 months from entry into force of this regulation], the Commission shall by means of an implementing act adopted in accordance with the examination procedure referred to in , lay down the practical and operational arrangements concerning: | 5. By [OJ: please insert the date = 18 months from entry into force of this regulation], the Commission shall by means of an implementing act adopted in accordance with the examination procedure referred to in Article 68(2), lay down the practical and operational arrangements concerning: |
Amendment 99
Proposal for a regulation
Article 26 – paragraph 5 – point a
| Text proposed by the Commission | Amendment |
| (a) the requirements for evaluators or conciliators, including a Code of Conduct; | (a) the requirements for evaluators or conciliators, including a Code of Conduct and necessary qualifications, experience, and criteria for impartiality; |
Amendment 100
Proposal for a regulation
Article 27 – paragraph 1
| Text proposed by the Commission | Amendment |
| 1. The competence centre shall conduct a procedure of selecting candidates based on the requirements established in the implementing act referred to in Article 26(5). | 1. The competence centre shall conduct a transparent procedure of selecting candidates based on the requirements established in the implementing act referred to in Article 26(5). |
Amendment 101
Proposal for a regulation
Article 27 – paragraph 2
| Text proposed by the Commission | Amendment |
| 2. The competence centre shall establish a roster of suitable candidates for evaluators or conciliators. There may be different rosters of evaluators and conciliators depending on the technical area of their specialisation or expertise. | 2. The competence centre shall establish a roster of qualified, experienced and impartial candidates for evaluators or conciliators. There may be different rosters of evaluators and conciliators depending on the technical area of their specialisation or expertise. |
Amendment 102
Proposal for a regulation
Article 28 – paragraph 2
| Text proposed by the Commission | Amendment |
| 2. The essentiality check shall be conducted by an evaluator selected pursuant to Article 27. Evaluators shall conduct essentiality checks of registered SEPs for the standard for which they are registered. | 2. The essentiality check shall be conducted by an evaluator selected pursuant to Article 27. Evaluators shall conduct essentiality checks of registered SEPs for the standard for which they are registered. The essentiality check shall not be conducted before the adoption of the standard to which the patents is declared to be essential. |
Amendment 103
Proposal for a regulation
Article 29 – paragraph 1
| Text proposed by the Commission | Amendment |
| 1. The competence centre shall select annually a sample of registered SEPs from different patent families from each SEP holder and with regard to each specific standard in the register for essentiality checks. Registered SEPs of micro and small enterprises shall be excluded from the annual sampling process. The checks shall be conducted based on a methodology that ensures the establishment of a fair and statistically valid selection that can produce sufficiently accurate results about the essentiality rate in all registered SEPs of a SEP holder with regard to each specific standard in the register. By [OJ: please insert the date = 18 months from entry into force of this regulation] the Commission shall, by means of an implementing act, determine the detailed methodology. That implementing act shall be adopted in accordance with the examination procedure referred to in Article 68(2). | 1. The competence centre shall select annually a sample of registered SEPs from different patent families from each SEP holder and with regard to each specific standard in the register for essentiality checks. Registered SEPs of micro and small enterprises shall be excluded from the annual sampling process, unless they are a patent assertion entity or directly or indirectly controlled by a legal person that does not satisfy the definition of a micro or small enterprise. The checks shall be conducted based on a methodology that ensures the establishment of a fair and statistically valid selection that can produce sufficiently accurate results about the essentiality rate in all registered SEPs of a SEP holder with regard to each specific standard in the register. By [OJ: please insert the date = 18 months from entry into force of this regulation] the Commission shall, by means of an implementing act, determine the detailed methodology. That implementing act shall be adopted in accordance with the examination procedure referred to in Article 68(2). |
Amendment 104
Proposal for a regulation
Article 29 – paragraph 2
| Text proposed by the Commission | Amendment |
| 2. The competence centre shall notify the SEP holders about the SEPs selected for essentiality checks. Within the time limit established by the competence centre, the SEP holders may submit within the same time period a claim chart with a maximum amount of five correspondences between the SEP and the relevant standard, any additional technical information that may facilitate the essentiality check and translations of the patent requested by the competence centre. | 2. The competence centre shall notify the SEP holders about the SEPs selected for essentiality checks. Within the time limit established by the competence centre, the SEP holders may submit within the same time period any additional technical information that may facilitate the essentiality check and translations of the patent requested by the competence centre. |
Amendment 105
Proposal for a regulation
Article 29 – paragraph 4
| Text proposed by the Commission | Amendment |
| 4. If a SEP selected for essentiality check was already the subject of a previous or ongoing essentiality check pursuant to This title or of an essentiality decision or check referred to in Article 8, no additional essentiality check shall be done. The result from the previous essentiality check or decision shall be used for the determination of the percentage of sampled per SEP holder and per specific registered standard that has passed successfully the essentiality check. | 4. If a SEP selected for essentiality check was already the subject of a previous or ongoing essentiality check pursuant to this Title or of an essentiality decision or check performed, in good faith, by an independent evaluator in the context of a patent pool, no additional essentiality check shall be done, if verified the criteria foreseen in Article 29 (4a). The result from the previous essentiality check or decision shall be used for the determination of the percentage of sampled per SEP holder and per specific registered standard that has passed successfully the essentiality check. |
Amendment 106
Proposal for a regulation
Article 29 – paragraph 4 a (new)
| Text proposed by the Commission | Amendment |
| 4 a. Patent pools shall transmit to the competence centre all the information about the methodology of the essentiality check and the criteria used for the selection of the evaluators. |
Amendment 107
Proposal for a regulation
Article 31 – paragraph 2
| Text proposed by the Commission | Amendment |
| 2. The evaluator may invite the SEP holder concerned to file observations, within a period to be fixed by the evaluator. | 2. The evaluator may invite the SEP holder or implementer concerned to file observations, within a period to be fixed by the evaluator. |
Amendment 108
Proposal for a regulation
Article 32 – paragraph 6
| Text proposed by the Commission | Amendment |
| 6. The competence centre shall notify the final reasoned opinion to the SEP holder. | 6. The competence centre shall notify the final reasoned opinion to the SEP holder and all other parties which have provided observations or evidence. |
Amendment 109
Proposal for a regulation
Article 33 – paragraph 1
| Text proposed by the Commission | Amendment |
| 1. The competence centre shall enter the result of the essentiality check or of the peer evaluation in the register and the reasoned opinion and final reasoned opinion in the database. The result of the essentiality check under this Regulation shall be valid for all SEPs from the same patent family. | 1. The competence centre shall enter the result of the essentiality check or of the peer evaluation in the register and the reasoned opinion and final reasoned opinion in the database. The result of the essentiality check under this Regulation shall be valid for all relevant SEPs from the same patent family. |
Amendment 110
Proposal for a regulation
Article 34 – paragraph 1 – introductory part
| Text proposed by the Commission | Amendment |
| 1. The FRAND determination in respect of a standard and implementation for which an entry in the register has been created, shall be initiated by any of the following persons: | 1. The FRAND determination in respect of any standards and implementations for which an entry in the register has been created, shall be initiated by any of the following persons: |
Amendment 111
Proposal for a regulation
Article 34 – paragraph 4
| Text proposed by the Commission | Amendment |
| 4. The obligation to initiate FRAND determination pursuant to paragraph 1 prior to the court proceedings is without prejudice to the possibility for either party to request, pending the FRAND determination, the competent court of a Member State to issue a provisional injunction of a financial nature against the alleged infringer. The provisional injunction shall exclude the seizure of property of the alleged infringer and the seizure or delivery up of the products suspected of infringing a SEP. Where national law provides that the provisional injunction of a financial nature can only be requested where a case is pending on the merits, either party may bring a case on the merits before the competent court of a Member State for that purpose. However, the parties shall request the competent court of a Member State to suspend the proceedings on the merits for the duration of the FRAND determination. In deciding whether to grant the provisional injunction, the competent court of a Member States shall consider that a procedure for FRAND determination is ongoing. | 4. The obligation to initiate FRAND determination pursuant to paragraph 1 prior to the court proceedings is without prejudice to the possibility for either party to request, pending the FRAND determination, the competent court of a Member State to issue a provisional injunction against the alleged infringer. Where national law provides that the provisional injunction of a financial nature can only be requested where a case is pending on the merits, either party may bring a case on the merits before the competent court of a Member State for that purpose. However, the parties shall request the competent court of a Member State to suspend the proceedings on the merits for the duration of the FRAND determination. In deciding whether to grant the provisional injunction, the competent court of a Member States shall consider that a procedure for FRAND determination is ongoing. |
Amendment 112
Proposal for a regulation
Article 37 – paragraph 1
| Text proposed by the Commission | Amendment |
| 1. Unless otherwise agreed by the parties, the period from the date of the submission of the request to continue the FRAND determination in accordance with Article 38(5)(b) or Article 38(3)(c) or Article 38(4)(a), second sentence, or Article 38(4)(c), as applicable, until the date of the termination of the procedure shall not exceed 9 months. | 1. Unless otherwise agreed by the parties, the period from the date of the submission of the request to continue the FRAND determination in accordance with Article 38(3)(b) or Article 38(3)(c) or Article 38(4)(a), second sentence, or Article 38(4)(c), as applicable, until the date of the termination of the procedure shall not exceed 9 months. |
Amendment 113
Proposal for a regulation
Article 38 – paragraph 2
| Text proposed by the Commission | Amendment |
| 2. The responding party shall notify the competence centre within 15 days from the receipt of the notification of the request for FRAND determination from the competence centre in accordance with paragraph (1). The response shall indicate whether the responding party agrees to the FRAND determination and whether it commits to comply with its outcome. | 2. The responding party shall notify the competence centre within 15 days from the receipt of the notification of the request for FRAND determination from the competence centre in accordance with paragraph (1). The response shall indicate whether the responding party agrees to the FRAND determination and, in case of disagreement, include the reasons for declining to participate. |
Amendment 114
Proposal for a regulation
Article 38 – paragraph 3 – introductory part
| Text proposed by the Commission | Amendment |
| 3. Where the responding party does not reply within the time limit laid down in paragraph (2) or informs the competence centre of its decision not to participate in the FRAND determination, or not to commit to comply with the outcome, the following shall apply: | 3. Where the responding party does not reply within the time limit laid down in paragraph (2) or informs the competence centre of its decision not to participate in the FRAND determination, the following shall apply: |
Amendment 115
Proposal for a regulation
Article 38 – paragraph 3 – point a
| Text proposed by the Commission | Amendment |
| (a) the competence centre shall notify the requesting party thereof and invite it to indicate within seven days whether it requests the continuation of the FRAND determination and whether it commits to comply with the outcome of the FRAND determination; | (a) the competence centre shall notify the requesting party thereof and invite it to indicate within seven days whether it requests the continuation of the FRAND determination; |
Amendment 116
Proposal for a regulation
Article 38 – paragraph 3 – point b
| Text proposed by the Commission | Amendment |
| (b) where the requesting party requests the continuation of the FRAND determination and commits to its outcome, the FRAND determination shall continue, but Article 34(1) shall not apply to the court proceedings for the requesting party in relation to the same subject matter. | (b) where the requesting party requests the continuation of the FRAND determination, the FRAND determination shall continue, but Article 34(1) shall not apply to the court proceedings for the requesting party in relation to the same subject matter. |
Amendment 117
Proposal for a regulation
Article 38 – paragraph 4 – introductory part
| Text proposed by the Commission | Amendment |
| 4. Where the responding party agrees to the FRAND determination and commits to comply with its outcome pursuant to paragraph (2), including where such commitment is contingent upon the commitment of the requesting party to comply with the outcome of the FRAND determination, the following shall apply: | 4. Where the responding party agrees to the FRAND determination pursuant to paragraph (2), the following shall apply: |
Amendment 118
Proposal for a regulation
Article 38 – paragraph 4 – point a
| Text proposed by the Commission | Amendment |
| (a) the competence centre shall notify the requesting party thereof and request to inform the competence centre within seven days whether it also commits to comply with the outcome of the FRAND determination. In case of acceptance of the commitment by the requesting party, the FRAND determination shall continue and the outcome shall be binding for both parties; | (a) the competence centre shall notify the requesting party thereof. In case of acceptance of the commitment by the requesting party, the FRAND determination shall continue and the outcome shall be binding for both parties; |
Amendment 119
Proposal for a regulation
Article 38 – paragraph 4 – point b
| Text proposed by the Commission | Amendment |
| (b) where the requesting party does not reply within the time limit referred to in subparagraph (a) or informs the competence centre of its decision not to commit to comply with outcome of the FRAND determination, the competence centre shall notify the responding party and invite it to indicate within seven days whether it requests the continuation of the FRAND determination. | (b) where the requesting party does not reply within the time limit referred to in subparagraph (a), the competence centre shall notify the responding party and invite it to indicate within seven days whether it requests the continuation of the FRAND determination. |
Amendment 120
Proposal for a regulation
Article 38 – paragraph 4 – point c
| Text proposed by the Commission | Amendment |
| (c) where the responding party requests the continuation of the FRAND determination, the FRAND determination shall continue, but Article 34(1) shall not apply to the court proceedings for by the responding party in relation to the same subject matter; | (c) where the responding party, within the time-limit referred to in subparagraph (b), requests the continuation of the FRAND determination, the FRAND determination shall continue, but Article 34(1) shall not apply to the court proceedings for by the responding party in relation to the same subject matter; |
Amendment 121
Proposal for a regulation
Article 38 – paragraph 4 a (new)
| Text proposed by the Commission | Amendment |
| 4 a. Each party may, at any time during the FRAND determination process, declare to commit to comply with its outcome. The declaring party may make its commitment to comply subject to the other party's commitment to the outcome. This shall not terminate the FRAND determination process. |
Amendment 122
Proposal for a regulation
Article 38 – paragraph 5
| Text proposed by the Commission | Amendment |
| 5. Where either party commits to comply with the outcome of the FRAND determination, while the other party fails to do so within the applicable time limits, the competence centre shall adopt a notice of commitment to the FRAND determination and notify the parties within 5 days from the expiry of the time-limit to provide the commitment. The notice of commitment shall include the names of the parties, the subject-matter of the FRAND determination, a summary of the procedure and information on the commitment provided or on the failure to provide commitment for each party. | 5. Where either party commits to comply with the outcome of the FRAND determination, while the other party rejects to do so, the competence centre shall adopt a notice of commitment to the FRAND determination and notify the parties within 5 days from the expiry of the time-limit to provide the commitment. The notice of commitment shall include the names of the parties, the subject-matter of the FRAND determination, a summary of the procedure and information on the commitment provided or on the failure to provide commitment for each party. |
Amendment 123
Proposal for a regulation
Article 38 – paragraph 6
| Text proposed by the Commission | Amendment |
| 6. The FRAND determination shall concern a global SEP licence, unless otherwise specified by the parties in case both parties agree to the FRAND determination or by the party that requested the continuation of the FRAND determination. SMEs that are parties to the FRAND determination may request to limit the territorial scope of the FRAND determination. | 6. The FRAND determination shall concern a global SEP licence, unless otherwise specified by the parties in case both parties agree to the FRAND determination or by the party that requested the continuation of the FRAND determination, as set out in paragraph (3). SMEs and start-ups that are parties to the FRAND determination may request to limit the territorial scope of the FRAND determination. |
Amendment 124
Proposal for a regulation
Article 39 – paragraph 1
| Text proposed by the Commission | Amendment |
| 1. Following the reply to the FRAND determination by the responding party in accordance with Article 38(2), or the request to continue in accordance with Article 38(5), the competence centre shall propose at least 3 candidates for the FRAND determination from the roster of conciliators referred to Article 27(2). The parties or party shall select one of the proposed candidates as a conciliator for the FRAND determination. | 1. Following the reply to the FRAND determination by the responding party in accordance with Article 38(2), or the request to continue in accordance with Article 38(4) point (c), the competence centre shall propose at least 3 candidates for the FRAND determination from the roster of conciliators referred to Article 27(2). The parties or party shall select one of the proposed candidates as a conciliator for the FRAND determination. |
Amendment 125
Proposal for a regulation
Article 42 – paragraph 2
| Text proposed by the Commission | Amendment |
| 2. He/she shall communicate to the parties or the party requesting the continuation of the FRAND determination the conduct as well as the schedule of procedure. | 2. He/she shall communicate to the parties or the party requesting the continuation of the FRAND determination, as set out in Article 38 (3), the conduct as well as the schedule of procedure. |
Amendment 126
Proposal for a regulation
Article 44 – paragraph 1
| Text proposed by the Commission | Amendment |
| 1. A party may submit an objection stating that the conciliator is unable to make a FRAND determination on legal grounds, such as a previous binding FRAND determination or agreement between the parties, no later than in the first written submission. The other party shall be given opportunity to submit its observations. | 1. A party may submit an objection stating that the conciliator is unable to make a FRAND determination on legal grounds, such as a previous binding FRAND determination or agreement between the parties at any time. The other party shall be given opportunity to submit its observations. |
Amendment 127
Proposal for a regulation
Article 45 – paragraph 2
| Text proposed by the Commission | Amendment |
| 2. The conciliator may invite the parties or the party requesting the continuation of the FRAND determination to meet with him/her or may communicate with him/her orally or in writing. | 2. The conciliator may invite the parties or the party requesting the continuation of the FRAND determination, as set out in Article 38 (3), to meet with him/her or may communicate with him/her orally or in writing. |
Amendment 128
Proposal for a regulation
Article 45 – paragraph 3
| Text proposed by the Commission | Amendment |
| 3. The parties or the party requesting the continuation of the FRAND determination shall cooperate in good faith with the conciliator and, in particular, shall attend the meetings, comply with his/her requests to submit all relevant documents, information and explanations as well as use the means at their disposal to enable the conciliator to hear witnesses and experts whom the conciliator might call. | 3. The parties or the party requesting the continuation of the FRAND determination, as set out in Article 38 (3), shall cooperate in good faith with the conciliator and, in particular, shall attend the meetings, comply with his/her requests to submit all relevant documents, information and explanations as well as use the means at their disposal to enable the conciliator to hear witnesses and experts whom the conciliator might call. |
Amendment 129
Proposal for a regulation
Article 45 – paragraph 4
| Text proposed by the Commission | Amendment |
| 4. The responding party may join the FRAND determination at any moment before its termination. | 4. The responding party, which failed to respond within the time limit laid down in Article 38 (2), may join the FRAND determination at any moment before its termination. |
Amendment 130
Proposal for a regulation
Article 45 – paragraph 5
| Text proposed by the Commission | Amendment |
| 5. At any stage of the procedure upon request by both parties, or the party requesting the continuation of the FRAND determination, as applicable, the conciliator shall terminate the FRAND determination. | 5. At any stage of the procedure upon request by both parties, or the party requesting the continuation of the FRAND determination, as set out in Article 38 (3) and as applicable, the conciliator shall terminate the FRAND determination. |
Amendment 131
Proposal for a regulation
Article 46 – paragraph 1 – point b
| Text proposed by the Commission | Amendment |
| (b) withdraws its commitment to comply with the outcome of the FRAND determination as set out in Art. 38, or | deleted |
Amendment 132
Proposal for a regulation
Article 46 – paragraph 3
| Text proposed by the Commission | Amendment |
| 3. If the party requesting the continuation of the FRAND determination fails to comply with any request of the conciliator or in any other way fails to comply with a requirement relating to the FRAND determination, the conciliator shall terminate the procedure. | 3. If the party requesting the continuation of the FRAND determination, as set out in Article 38 (3), fails to comply with any request of the conciliator or in any other way fails to comply with a requirement relating to the FRAND determination, the conciliator shall terminate the procedure. |
Amendment 133
Proposal for a regulation
Article 47 – paragraph 2
| Text proposed by the Commission | Amendment |
| 2. Where a parallel proceeding has been initiated before or during the FRAND determination by a party, the conciliator, or where he/she has not been appointed, the competence centre, shall terminate the FRAND determination upon the request of any other party. | 2. Where a parallel proceeding has been initiated before or during the FRAND determination by a party, the conciliator, or where he/she has not been appointed, the competence centre, shall terminate the FRAND determination upon the request of any party, only if the party who requested the establishment of the FRAND conditions gives its consent. |
Amendment 134
Proposal for a regulation
Article 48 – paragraph 2
| Text proposed by the Commission | Amendment |
| 2. The conciliator may examine publicly available information and the competence centre’s register and confidential and non-confidential reports of other FRAND determinations, as well as non-confidential documents and information produced by or submitted to the competence centre. | 2. The conciliator may examine publicly available information and the competence centre’s register and confidential and non-confidential reports of other FRAND determinations, aggregate royalty rates submitted pursuant to Article 15, non-binding expert opinions on aggregate royalty rates established pursuant to Article 18 as well as non-confidential documents and information produced by or submitted to the competence centre. |
Amendment 135
Proposal for a regulation
Article 55 – paragraph 2
| Text proposed by the Commission | Amendment |
| 2. Either party may submit observations to the proposal and suggest amendments to the proposal by the conciliator, who may reformulate its proposal to take into account the observations submitted by the parties and shall inform the parties or the party requesting the continuation of the FRAND determination, as applicable, of such reformulation. | 2. Either party may submit observations to the proposal and suggest amendments to the proposal by the conciliator, who may reformulate its proposal to take into account the observations submitted by the parties and shall inform the parties or the party requesting the continuation of the FRAND determination, as set out in Article 38 and as applicable, of such reformulation. |
Amendment 136
Proposal for a regulation
Article 56 – paragraph 1 – introductory part
| Text proposed by the Commission | Amendment |
| 1. In addition to the termination of the FRAND determination for reasons provided for Article 38(4), Article 44(3), Article 45(5), Article 46(2), point (b), Article 46(3) and Article 47(2), the FRAND determination shall be terminated in any of the following ways: | 1. In addition to the termination of the FRAND determination for reasons provided for Article 38(3) point (c), 38(4) point (d), Article 44(3), Article 45(5), Article 46(2), point (b), Article 46(3) and Article 47(2), the FRAND determination shall be terminated in any of the following ways: |
Amendment 137
Proposal for a regulation
Article 56 – paragraph 4
| Text proposed by the Commission | Amendment |
| 4. A competent court of a Member State, asked to decide on determination of FRAND terms and conditions, including in abuse of dominance cases among private parties, or SEP infringement claim concerning a SEP in force in one or more Member States subject to the FRAND determination shall not proceed with the examination of the merits of that claim, unless it has been served with a notice of termination of the FRAND determination, or, in the cases foreseen in Article 38(3)(b) and Article 38(4)(c), with a notice of commitment pursuant to Article 38(5). | 4. A competent court of a Member State, asked to decide on determination of FRAND terms and conditions, including in abuse of dominance cases among private parties, or SEP infringement claim concerning a SEP in force in one or more Member States subject to the FRAND determination shall not proceed with the examination of the merits of that claim, unless it has been served with a notice of termination of the FRAND determination. |
Amendment 138
Proposal for a regulation
Article 60 – paragraph 1 a (new)
| Text proposed by the Commission | Amendment |
| 1 a. The period specified in days ends on the last day, a period marked in weeks ends at the end of the day in the last week, a period specified in months ends on the expiry of the day corresponding to the initial day of the period, and if there was no such day in the last month - then on the last day of that month, a period marked in years ends on the expiry of the day corresponding to the initial day of a given period, and if there was no such day, the end date will be the last day of that month. |
Amendment 139
Proposal for a regulation
Article 61 – paragraph 1
| Text proposed by the Commission | Amendment |
| 1. The competence centre shall offer training and support on SEP related matters for micro, small and medium-size enterprises free of charge. | 1. The competence centre shall offer training and support on SEP related matters for micro, small and medium-size enterprises and start-ups free of charge, in particular to offer practical guidance and advice, whether they are SEP holder or implementers. The competence centre shall, on a regular basis, proactively seek input from micro, small and medium-size enterprises and start-ups on what training and support would be most helpful. |
Amendment 140
Proposal for a regulation
Article 61 – paragraph 2
| Text proposed by the Commission | Amendment |
| 2. The competence centre may commission studies, if it considers it necessary, to assist micro, small and medium-size enterprises on SEP related matters. | 2. The competence centre may commission studies, if it considers it necessary, to assist micro, small and medium-size enterprises and start-ups on SEP related matters. Such studies may include requiring SEP holders and implementers to provide information regarding licenses entered into, royalties paid or collected, and products sold for IoT applications, and the competence centre may provide estimates of licensing costs for such applications to micro, small and medium-size enterprises. |
Amendment 141
Proposal for a regulation
Article 61 – paragraph 3 a (new)
| Text proposed by the Commission | Amendment |
| 3 a. This Article shall not apply to patent assertion entities irrespective of their status as a micro, small or medium-sized enterprise. |
Amendment 142
Proposal for a regulation
Article 61 – paragraph 3 b (new)
| Text proposed by the Commission | Amendment |
| 3 b. The EUIPO shall ensure that this function is sufficiently funded and resourced. |
Amendment 143
Proposal for a regulation
Article 62 – paragraph 1
| Text proposed by the Commission | Amendment |
| 1. When negotiating a SEP licence with micro, small and medium-sized enterprises, SEP holders shall consider offering to them FRAND terms and conditions that are more favourable than the FRAND terms and conditions they offer to enterprises that are not micro, small and medium-sized for the same standard and implementations. | 1. When negotiating a SEP licence with micro, small and medium-sized enterprises, SEP holders shall offer to them FRAND terms and conditions that are more favourable than the FRAND terms and conditions they offer to enterprises that are not micro, small and medium-sized for the same standard and implementations. |
Amendment 144
Proposal for a regulation
Article 62 – paragraph 3
| Text proposed by the Commission | Amendment |
| 3. SEP holders shall also consider discounts or royalty-free licensing for low sales volumes irrespective of the size of the implementer taking the licence. Such discounts or royalty-free licensing shall be fair, reasonable and non-discriminatory and shall be available in the electronic database as set out in Article 5(2), point (b). | 3. SEP holders shall also consider discounts, spreading payments into interest-free instalments or royalty-free licensing for low sales volumes irrespective of the size of the implementer taking the licence. Such discounts or royalty-free licensing shall be fair, reasonable and non-discriminatory and shall be available in the electronic database as set out in Article 5(2), point (b). |
Amendment 145
Proposal for a regulation
Article 62 – paragraph 3 a (new)
| Text proposed by the Commission | Amendment |
| 3 a. Any benefits granted to micro, small and medium-sized enterprises under this Regulation may be withheld or withdrawn in cases of circumvention or misuse. |
Amendment 146
Proposal for a regulation
Article 63 – paragraph 3 – point b
| Text proposed by the Commission | Amendment |
| (b) the fees referred to in paragraph (2), point (b) equally by the parties that participated in the procedure of the expert opinion on aggregate royalty, unless they agree otherwise, or the panel suggests a different apportionment based on the size of the parties determined on the basis of their turnover; | (b) the fees referred to in paragraph (2), point (b) equally by the parties that participated in the procedure of the expert opinion on aggregate royalty, unless they agree otherwise, or the panel suggests a different apportionment based on the size of the parties determined on the level of the parties’ participation in the aggregate royalty determination and their economic interest in the outcome of the procedure; |
Amendment 147
Proposal for a regulation
Article 66
| Text proposed by the Commission | Amendment |
| Article 66 | deleted |
| Opening registration for an existing standard | |
| 1. Until [OJ: please insert the date = 28 months from the entry into force of this regulation] holders of SEPs essential to a standard published before the entry into force of this Regulation (‘existing standards’), for which FRAND commitments have been made, may notify the competence centre pursuant to Articles 14, 15 and 17 of any of the existing standards or parts thereof that will be determined in the delegated act in accordance with paragraph (4). The procedures, notification and publication requirements set out in this Regulation apply mutatis mutandis. | |
| 2. Until [OJ: please insert the date = 28 months from entry into force of this regulation] implementers of a standard, standard published before the entry into force of this Regulation, for which FRAND commitments have been made may notify pursuant to Article 14(4) the competence centre of any of the existing standards or parts thereof, that will be determined in the delegated act in accordance with paragraph (4). The procedures, notification and publication requirements set out in this Regulation apply mutatis mutandis. | |
| 3. Until [OJ: please insert the date = 30 months from entry into force of this regulation] a SEP holder or an implementer may request an expert opinion pursuant to Article 18 regarding SEPs essential to an existing standard or parts thereof, that will be determined in the delegated act in accordance with paragraph (4). The requirements and procedures set out in Article 18 apply mutatis mutandis. | |
| 4. Where the functioning of the internal market is severely distorted due to inefficiencies in the licensing of SEPs, the Commission shall, after an appropriate consultation process, by means of a delegated act pursuant to Article 67, determine which of the existing standards, parts thereof or relevant use cases can be notified in accordance with paragraph (1) or paragraph (2), or for which an expert opinion can be requested in accordance with paragraph (3). The delegated act shall also determine which procedures, notification and publication requirements set out in this Regulation apply to those existing standards. The delegated act shall be adopted within [OJ: please insert the date = 18 months from entry into force of this regulation]. | |
| 5. This article shall apply without prejudice to any acts concluded and rights acquired by [OJ: please insert the date = 28 months from entry into force of this regulation]. |
Amendment 148
Proposal for a regulation
Article 67 – paragraph 2
| Text proposed by the Commission | Amendment |
| 2. The power to adopt a delegated act referred to in Articles 1(4), 4(5) and 66(4) shall be conferred on the Commission for an indeterminate period of time from the date of entry into force of this Regulation. | 2. The power to adopt a delegated act referred to in Article 4(5) shall be conferred on the Commission for an indeterminate period of time from the date of entry into force of this Regulation. |
Amendment 149
Proposal for a regulation
Article 67 – paragraph 3
| Text proposed by the Commission | Amendment |
| 3. The delegation of power referred to in Articles 1(4), 4(5) and 66(4) may be revoked at any time by the European Parliament or by the Council. A decision to revoke shall put an end to the delegation of the power specified in that decision. It shall take effect the day following the publication of the decision in the Official Journal of the European Union or at a later date specified therein. It shall not affect the validity of any delegated acts already in force. | 3. The delegation of power referred to in Article 4(5) may be revoked at any time by the European Parliament or by the Council. A decision to revoke shall put an end to the delegation of the power specified in that decision. It shall take effect the day following the publication of the decision in the Official Journal of the European Union or at a later date specified therein. It shall not affect the validity of any delegated acts already in force. |
Amendment 150
Proposal for a regulation
Article 67 – paragraph 6
| Text proposed by the Commission | Amendment |
| 6. A delegated act adopted pursuant to Articles 1(4), 4(5) and 66(4) shall enter into force only if no objection has been expressed either by the European Parliament or the Council within a period of 2 months of notification of that act to the European Parliament and the Council or if, before the expiry of that period, the European Parliament and the Council have both informed the Commission that they will not object. That period shall be extended by 2 months at the initiative of the European Parliament or of the Council. | 6. A delegated act adopted pursuant to Article 4(5) shall enter into force only if no objection has been expressed either by the European Parliament or the Council within a period of 2 months of notification of that act to the European Parliament and the Council or if, before the expiry of that period, the European Parliament and the Council have both informed the Commission that they will not object. That period shall be extended by 2 months at the initiative of the European Parliament or of the Council. |
Amendment 151
Proposal for a regulation
Article 70 – paragraph 1
| Text proposed by the Commission | Amendment |
| 1. By [OJ: please insert the date = 5 years from entry into force of this regulation] the Commission shall evaluate the effectiveness and efficiency of the SEP registration and the essentiality check system. | 1. By [OJ: please insert the date = 3 years from entry into force of this regulation] the Commission shall evaluate the impact that the essentiality check system and the FRAND determination system on the competitiveness of the Union SEP holders on a global level and on innovation in the Union. |
Amendment 152
Proposal for a regulation
Article 70 – paragraph 2
| Text proposed by the Commission | Amendment |
| 2. By [OJ: please insert the date = 8 years from entry into force of this regulation], and every five years thereafter, the Commission shall evaluate the implementation of this Regulation. The evaluation shall assess the operation of this Regulation, in particular the impact, effectiveness and efficiency of the competence centre and its working methods. | 2. By [OJ: please insert the date = 5 years from entry into force of this regulation], and every 3 years thereafter, the Commission shall evaluate the implementation of this Regulation. The evaluation shall assess the operation of this Regulation, in particular the impact, effectiveness and efficiency of the competence centre and its working methods. |
ANNEX: ENTITIES OR PERSONS FROM WHOM THE RAPPORTEUR FOR THE OPINION HAS RECEIVED INPUT
The rapporteur has received input from the following entities or persons in the preparation of the opinion:
| Entity and/or person |
| ACEA (European Manufacturers’ Association) |
| ACT (The App Association) |
| Airties |
| Amazon |
| Apple Inc. |
| Bayerische Motoren Werke AG |
| BURY Technologies |
| CEN-CENELEC |
| Cisco Systems Inc. |
| Continental AG |
| Copan Walter (former U.S. Undersecretary of Commerce for Standards and Technology) |
| Czech Automotive Industry Association |
| Czech Chamber of Commerce |
| Delrahim Makan (former U.S. Assistant Attorney General DOJ Antitrust) |
| Deutsche Telekom |
| DLA Piper |
| Dolby Laboratories |
| EARTO (European Association of Research and Technology Organisations) |
| EDPS (European Data Protection Supervisor) |
| Emporia |
| Ericsson |
| ESMIG (The European Smart Energy Solution Providers) |
| EPLAW (European Patent Lawyer Office) |
| European Patent Office |
| EVBox |
| Fairphone |
| Fair Standards Alliance |
| Forward Global |
| George Masson University – Professor Adam Mossof |
| German Association of the Automotive Industry (VDA) |
| Harman International Industries |
| Honda Motor Co. Ltd |
| HP Inc. |
| Iancu Andrei (former Under Secretary of Commerce for Intellectual Property and Director of the USPTO) |
| Ingenico |
| Intel Corporation |
| IP Europe |
| Iskraemeco Group |
| Itron Inc. |
| Juniper Networks Inc. |
| Kamstrup A/S |
| Kappos David J. (former Under Secretary of Commerce for Intellectual Property and Director of the USPTO) |
| Landis & Gyr AG |
| Lenovo |
| Lucid Circus |
| Maghame IP Consulting - Taraneh Maghamé |
| Marconi - Avanci Platform |
| Mazda Motor Corporation |
| Mercedes Benz |
| Microsoft Corporation |
| Nissan Motor Co., Ltd. |
| Nokia |
| Nordic Semiconductor |
| Orange |
| Parliament of the Czech Republic |
| Permanent Representation of Finland to the EU |
| Phillips Noah J. (former U.S. Commissioner on the Federal Trade Commission) |
| PIPLI (Public Interest Patent Law Institute U.S.) |
| Qualcomm |
| Renault Group |
| Sagemcom |
| Schaeffler AG |
| Schneider Electric |
| Sequans Communication |
| Siemens |
| Sky |
| University of Skövde, Software Systems Research Group - Professor Björn Lundell |
| European Commission – SEPs Expert Group: - Barron Justus - Geradin Damien - Granata Sam - Heiden Bowman - Heinebrodt Martin - Hoffman Fabian - Kuźnicka-Cholewa Alksandra - Maghame Taraneh - Magnusson Monica - Padilla Jorge - Peter Ruud - Schneider Matthias - Toffaletti Sebastino |
| Stellantis N.V. |
| Suzuki Motor Corporation |
| Telit Communications SPA |
| Toyota |
| u-blox AG |
| UCL Faculty of Laws - Sir Robin Jacob |
| Unified Patent Court of Appeal |
| Varney Christine A. (former U.S. Assistant Attorney General DOJ Antitrust) |
| Volkswagen AG |
| Volvo Group |
| 4iP Council |
The list above is drawn up under the exclusive responsibility of the rapporteur.